OPPOSITION Nо B 3 112 839

Sun Mark Limited, Sun House, 428 Long Drive, UB6 8UH Greenford, United Kingdom (opponent), represented by Mars-IP, Bleibtreustr. 20, 10623 Berlin, Germany (professional representative)

a g a i n s t

Michal Židek, Palatínova 2732/61, 94501 Komárno, Slovakia (applicant), represented by H|P|R Advokátska Kancelária S.R.O., Galvaniho 7/d, 821 04 Bratislava, Slovakia (professional representative)

On 01/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 839 is upheld for all the contested goods.

2. European Union trade mark application No 18 148 808 is rejected in its entirety.

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

REASONS

On 28/02/2020, the opponent filed an opposition against all the goods European Union trade mark application No 18 148 808 (figurative mark). The opposition is based on the following earlier rights:

 European Union trade mark registration No 11 862 927 (figurative mark);

 European Union trade mark registration No 16 544 892 ‘ROYALTY’ (word mark)

 European Union trade mark registration No 7 082 589 ‘TASTE OF DISTINCTION ROYALTY’ (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.

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 European Union trade mark registration No 16 544 892 ‘ROYALTY’ (word mark).

a) The goods

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

Class 32: Flavoured carbonated beverages; juices; waters; alcohol free wine; cocktails, non-alcoholic; non-alcoholic beverages containing fruit juices; non-alcoholic fruit cocktails; non-carbonated soft drinks; soft drinks; beer and brewery products; preparations for making beverages; beverages containing vitamins; aperitifs, non-alcoholic; nut and soy based beverages; nutritionally fortified beverages; non-alcoholic sparkling fruit juice drinks; non-alcoholic malt drinks.

The contested goods are the following:

Class 32: Mineral water (non-medicated -); mineral water [beverages]; mineral and aerated waters; juices; aerated juices; juices; concentrated fruit juice; mixed fruit juice; vegetable juices [beverages]; aerated fruit juices; non-alcoholic vegetable juice drinks; table waters; soda water; seltzer water; syrups for beverages; syrups for lemonade; syrups for beverages; syrups for making non-alcoholic beverages; syrups for making soft drinks; syrups for making flavoured mineral waters; syrups for making fruit-flavored drinks; syrups and other non-alcoholic preparations for making beverages; isotonic drinks; isotonic beverages [not for medical purposes]; lemonades; non-alcoholic beverages; low-calorie soft drinks; carbonated non-alcoholic drinks; non-alcoholic fruit juice beverages; non-carbonated soft drinks; non-alcoholic flavored carbonated beverages; fruit flavored soft drinks; non-alcoholic beverages flavoured with tea; aloe vera drinks, non-alcoholic; vitamin fortified non-alcoholic beverages; non-alcoholic beverages containing vegetable juices; non-alcoholic beverages containing fruit juices; beverages consisting principally of fruit juices; fruit-based soft drinks flavored with tea; non-alcoholic soda beverages flavoured with tea; non-alcoholic sparkling fruit juice drinks; squashes [non-alcoholic beverages]; protein drinks; protein-enriched sports beverages; aerated water; aerated water (preparations for making -).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The contested mineral water (non-medicated -); mineral water [beverages]; mineral and aerated waters; table waters; soda water; seltzer water; aerated water fall in the opponent’s broad category of waters, and are therefore identical.

The contested juices; aerated juices; juices; concentrated fruit juice; mixed fruit juice; vegetable juices [beverages]; aerated fruit juices; non-alcoholic vegetable juice drinks; non-alcoholic fruit juice beverages; non-alcoholic beverages containing vegetable juices; non-alcoholic beverages containing fruit juices; beverages consisting principally of fruit juices; non-alcoholic sparkling fruit juice drinks are identical to the opponent’s juices, either because they are identically contained in both lists (including synonyms), or because the contested goods are included in, or overlap with, the opponent’s goods.

The contested syrups for beverages; syrups for lemonade; syrups for beverages; syrups for making non-alcoholic beverages; syrups for making soft drinks; syrups for making flavoured mineral waters; syrups for making fruit-flavored drinks; syrups and other non-alcoholic preparations for making beverages; aerated water (preparations for making -) fall in the opponent’s broad category of preparations for making beverages and are therefore identical.

The contested isotonic drinks; isotonic beverages [not for medical purposes]; protein drinks; protein-enriched sports beverages; vitamin fortified non-alcoholic beverages fall in the opponent’s broad category of nutritionally fortified beverages, and are identical.

The contested lemonades; low-calorie soft drinks; carbonated non-alcoholic drinks; non-carbonated soft drinks; non-alcoholic flavored carbonated beverages; fruit flavored soft drinks; non-alcoholic beverages flavoured with tea; aloe vera drinks, non-alcoholic; non-alcoholic beverages; fruit-based soft drinks flavored with tea; non-alcoholic soda beverages flavoured with tea; squashes [non-alcoholic beverages] are identical to the opponent’s soft drinks, either because the contested goods are included in, or overlap with, the opponent’s broad category (e.g. the contested low-calorie soft drinks).

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 are directed at the public at large.

At least part of the goods are low priced, and many of them are regularly purchased. They are sold in supermarkets and do not require any knowledge in order to be used. The degree of attention paid during their purchase is deemed to be, at best, average.

c) The signs

ROYALTY
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 Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as consumers in Malta and Ireland, since from their perspective the signs present more similarities (i.e. conceptually) and the differing element ‘WATER’ of the contested sign is of reduced impact, for the reasons explained in detail below. This is therefore the scenario in which likelihood of confusion is more likely to occur.

The word ‘ROYAL’ in the contested mark is an English adjective used to indicate, inter alia, that something is related/belongs to, or is part of, the monarchy. In addition, it is, more generally, evocative of luxury and magnificence (15/02/2007, T‑501/04, Royal, EU:T:2007:54, § 48; 08/05/2012, T‑348/10, Royal Veste e Premia lo sport, EU:T:2012:221, § 28). As such, it is weak in relation to the kind of relevant goods. The additional symbol, resembling a crown, serves to reinforce the verbal element ‘Royal’, and vice versa, and is also weak.

The word ‘water’ is void of distinctive character in relation to the goods in question that consist of water, and is of a low degree of distinctiveness in relation to the goods that may contain water or that require water for their use/preparation.

The combination of the words ‘ROYAL WATER’ is perceived as meaning a type of drink that has certain characteristics, for instance that it is luxurious.

The earlier mark ‘ROYALTY’ is the English noun used to refer to the royal family (monarchs, sovereigns, royals). The reasoning regarding ‘ROYAL’ also applies to this word since it refers to the same concept, with the only difference being that ‘ROYAL is an adjective and ‘ROYALTY’ is a noun.

The contested sign contains the dominant element ‘ROYAL’, in a large bold typeface, and the less eye-catching elements ‘ROYAL WATER’, in a thin typeface, and a depiction of a crown, both of which are much smaller and positioned at the top and bottom, respectively.

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). Therefore, the figurative element of the contested sign, together with the typeface and colour, which are part of the stylisation, are of less weight than the verbal elements.

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 and top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. Consequently, it is relevant to note that the coincidences are found in the first five letters, ‘ROYAL’, of both marks.

Visually, the signs coincide in the sequence of letters ‘ROYAL’, which constitutes the entire dominant element of the contested sign and the first of the two less eye-catching words below it.

The signs differ in the ending ‘TY’ of the earlier mark, and in the elements ‘WATER’, the depiction of a crown, and the colour and typeface of the contested mark.

Taking into account the degree of distinctiveness of each of the elements in the marks, together with the weight they have, for the reasons explained above (i.e. position, visual impact), the signs are visually similar to at least a low degree.

Aurally, the terms ‘ROYAL WATER’ of the contested sign are not likely to be pronounced. This is because they are of less visual impact and in last position. In addition, they are formed by a repetition of the dominant word ‘ROYAL’, which is placed above, and by the word ‘WATER’, which is void of distinctive character in relation to part of the goods and of a low degree of distinctiveness in relation to another part. Therefore, consumers will refer to the contested sign only as ‘ROYAL’.

The signs coincide in the sound of ‘ROYAL’ and differ in the sound of ‘TY’ of the earlier mark.

Taking into account the degree of distinctiveness of each of the elements in the marks, together with the weight they have, for the reasons explained above (i.e. position, visual impact) the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the words ‘ROYALTY’ and ‘ROYAL’ are not conceptually identical, they both refer to the concept of monarchy, as a noun or as an adjective. This coinciding concept is also conveyed by the depiction of a crown.

The signs differ in the concept of the word ‘WATER’ of the contested sign, which has, at best, a low degree of distinctiveness for the goods in question, as explained above.

Taking into account the degree of distinctiveness of each of the elements in the marks, the marks are conceptually similar to a high 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 word forming the earlier mark is weak for all the goods in question, since it is evocative of the monarchy and, more generally, of luxury and magnificence. Therefore, the earlier mark has a lower-than-average distinctive character.

e) Global assessment, other arguments and conclusion

All the contested goods have been considered identical, they target the public at large and the degree of attention paid during their purchase is deemed to be, at best, average.

The signs are visually similar to at least a low degree, and aurally and conceptually similar to a high degree. The earlier mark is considered of lower-than-average distinctive character.

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). Consumers will remember that the concept of ‘monarchy’ is contained in both marks, either as an adjective or as a noun. It is therefore likely that the differing letters ‘TY’ of the earlier mark will not be remembered, since they have hardly any impact at a conceptual level, and have little visual and aural impact, due to their position at the end of the word.

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). In the present case, the identity between the goods outweighs the at least low visual similarity between the signs.

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. 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). In the present case, even if consumers are aware of the differences between the marks (e.g. colour or number of elements forming them), it is likely that the contested mark will be perceived as a sub-brand or a variation of the earlier mark.

Therefore, and although the earlier mark has a lower-than-average distinctiveness, the similarities between the marks and the identity between the goods are considered enough to lead consumers to confusion or association as regards their commercial origin.

The applicant claims that

there are more than 100 registered trade marks in the EUIPO trade mark register, registered exclusively for Class 32 (goods in that class designating goods similar to those in the applicant’s application) or trade marks registered under another class having word ROYAL as part of the name

and submitted a link to the EUIPO database. He also states that

[a]s those marks were obviously registered by EUIPO, if the current opposition would be accepted, it would be an unprecedented decision which, in the applicant’s view, would be in conflict with the EUIPO’s practice and case-law, which would deny the applicants their rights for foreseeability and consistency of EUIPO decisions and furthermore causing the violation of legal certainty in relation to trade mark registration proceedings. The applicant argues that, in view of the amount of number of existing marks containing the word element ROYAL, the opponent cannot simply usurp for himself the exclusive right to the word ROYAL and modifications of this word, and furthermore to assert the prohibition of using this word merely because the opponent’s TM also contains this word.

However, the existence of trade marks previously registered containing the word ‘ROYAL’ does not limit the capacity and right of the owners of signs previously registered to file oppositions against new registrations. Weak words, such as ‘ROYAL’ or ‘ROYALTY’, can be used by different kinds of economic operators in the market, and in relation to a wide variety of goods and services. The limit to that is when the use and registration of such terms could lead to an overall similar impression and to a likelihood of confusion or association with an earlier mark.

The Opposition Division must examine, on a case-by-case basis, the existence of likelihood of confusion between the signs, taking into account all the particular circumstances of the case, including the distinctiveness of the earlier mark and its elements, and the goods or services in question. Therefore, the existence of the signs referred to by the applicant cannot lead to the dismissal of the opposition, and the applicant’s argument is set aside.

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 16 544 892 ‘ROYALTY’ (word mark).

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

As this earlier right 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

Sofía SACRISTÁN MARTÍNEZ

María del Carmen SUCH SANCHEZ

Irena LYUDMILOVA LECHEVA

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.