OPPOSITION Nо B 3 123 062

Capri Sun AG, Neugasse 22, 6300 Zug, Switzerland (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

D.B.W., S.à.r.l., 69, rue de la Libération, L‑4210 Esch-sur-Alzette, Luxembourg (applicant), represented by Dennemeyer & Associates, 55, rue des Bruyères, L‑1274 Howald, Luxembourg (professional representative).

On 30/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 123 062 is partially upheld, namely for the following contested goods:

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; salt; mustard; vinegar, sauces (condiments); spices; sports cereal bars and energy bars; sports cereal bars and energy bars enriched with amino acids.

Class 32: Beverages made from plant extracts, with stimulating, energising, draining, circulatory, slimming properties, mineral and aerated waters, non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa and milk beverages), gel beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.

2. European Union trade mark application No 18 168 201 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 04/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 168 201 (figurative mark). The opposition is based on European Union trade mark registration No 8 828 378 (figurative mark) and international trade mark registration designating the United Kingdom No 1 187 925 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

EARLIER UK RIGHT

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (EU) subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that international trade mark registration designating the United Kingdom No 1 187 925 no longer constitutes a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on this earlier right.

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 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

The contested goods are the following:

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances and food supplements for medical use; baby food; foodstuffs, namely food supplements and dietetic, dietary and sanitary preparations adapted for medical use; dietary supplements for sports nutrition; food and dietetic supplements for cosmetic purposes; dietary supplemental drinks.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; salt; mustard; vinegar, sauces (condiments); spices; ice; sports cereal bars and energy bars; sports cereal bars and energy bars enriched with amino acids.

Class 32: Beverages made from plant extracts, with stimulating, energising, draining, circulatory, slimming properties, mineral and aerated waters, non-alcoholic beverages and preparations for making beverages (except coffee, tea or cocoa and milk beverages), gel beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 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 5

The contested goods, which are mainly pharmaceuticals and other preparations for medical or veterinary purposes, have nothing in common with the opponent’s goods in Class 30 (foodstuffs, food-related goods such as flavourings or ingredients for preparing food), in Class 32 (non-alcoholic beverages, including their preparation) and Class 33 (alcoholic beverages).

Although the goods in question may target the same relevant public, as pointed out by the opponent, they clearly have a different nature (medical or healthcare-related goods as opposed to foodstuffs and beverages) and specific intended purpose (e.g. medical, curative, therapeutic and nutritive versus the quenching of thirst and hunger), and different methods of use. They usually originate from different entities and are neither complementary, in the sense that one is not indispensable for the use of the other, nor in competition. Furthermore, and contrary to the opponent’s argument, they are not sold through the same distribution channels, given that the contested goods are usually offered in pharmacies and drugstores whereas the opponent’s goods are sold in supermarkets or grocery stores. The fact that some of the contested goods may be beverages (e.g. dietary supplemental drinks) is not enough to conclude that these goods are similar to the opponent’s goods in Classes 30, 32 and 33.

The General Court has held that the mere fact that food supplements (in Class 5) may have ordinary nutritional functions in addition to their main function, which is a medical function in the broad sense of the term or one compensating for nutritional deficiencies, does not warrant these supplements being considered beverages as in Class 32 (or food products as in Class 30). These secondary aspects do not alter the fact that the average consumer does not consume nutritional supplements, vitamins and dietetic preparations as ordinary food or to quench thirst (23/01/2014, T‑221/12, Sun fresh, EU:T:2014:25, § 72). Therefore, despite some of the contested goods possibly having ordinary nutritional functions in addition to their main function (which is for medical purposes as explained above), the fact remains that they are preparations and supplements for treating or preventing diseases or improving people’s health.

The opponent argued in its submissions, dated 22/10/2020, that the contested baby food; dietary supplements for sports nutrition and the opponent’s preparations made from cereals in Class 30 coincide in their ingredients, namely cereals. However, the Opposition Division cannot uphold this argument since the contested baby food and dietary supplements for sports nutrition are specific formulations aimed at providing specific nutrients to infants or adults, particularly athletes, for medical reasons. They differ from the opponent’s goods in all of the relevant aspects. The similarity between the goods cannot be based on the sole fact that the goods share the same ingredient. In addition, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T‑72/10, Naty’s, EU:T:2011:635, § 35-36).

The opponent referred to the previous Office decision of 18/09/2015, B 2 450 818. Although the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities, the previous decision referred to by the opponent does not contain any findings in relation to the comparison of the goods that could change the outcome regarding their dissimilarity in the present case. The previous decision is not comparable to the present case, as it differs in the goods under comparison. In that case, a similarity was found between the contested dietetic foods and beverages, for medical purposes, based on fruit and fruit extracts; food for babies, namely soups, fruit compotes, fruit pulps (fruit purées), fruit and/or vegetable purées, fruit and/or vegetable juices, gruel (i.e. substances prepared for special dietary requirements, with the purpose of treating or preventing disease or of addressing the special dietary needs of babies) and the opponent’s preserved, dried, and cooked fruits and vegetables in Class 29 and flour and preparations made from cereals in Class 30 (i.e. foodstuffs based on fruits and vegetables and cereals for the general public). Those goods shared, inter alia, the main ingredients, namely fruit, vegetables and cereals. However, the present examination does not involve the same contested goods, as they are listed in a broader way and, furthermore, the opponent’s goods do not cover Class 29. Therefore, the circumstances of the previous decision differ from those in the present case, which justifies a different outcome. Therefore, the opponent’s reference to the previous Office decision must be set aside.

The opponent also referred to a previous Office decision of 22/03/2018, R 610/2017‑1, Loïc Le Ribault / Loïc Le Ribault, which concludes that the distinction between so-called functional, dietetic and low-calorie beverages, and ordinary beverages is not always clear-cut in the marketplace, and that many brands, including reputed ones, offer both sorts of beverages under the same or similar marks (22/03/2018, R 610/2017‑1, Loïc Le Ribault / Loïc Le Ribault, § 76). With respect to the opponent’s reference, the Opposition Division points out that the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. In view of the above, it follows that, even if the previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same. Therefore, the opponent’s argument regarding the abovementioned previous decision must be set aside.

As a final remark, the Nice Classification serves purely administrative purposes and does not provide in itself a basis for drawing conclusions as to the similarity of goods and services. However, reference to its structure may be useful to clarify the kind of goods at issue. As the abovementioned opponent’s goods belong to Classes 30, 32 and 33, they cannot have a medical purpose, while foodstuffs with medical purposes such as the contested goods belong to Class 5 of the Nice Classification.

On the basis of the above, the contested goods must be considered dissimilar to all of the opponent’s goods in Classes 30, 32 and 33.

Contested goods in Class 30

The contested coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; salt; mustard; vinegar, sauces (condiments) are identically contained in the opponent’s list of goods (including a slightly different wording of the contested sauces (condiments), which appear as only sauces in the opponent’s list).

The contested sports cereal bars and energy bars; sports cereal bars and energy bars enriched with amino acids are included in the broad category of the opponent’s preparations made from cereals. Therefore, they are identical.

The contested spices are highly similar to the opponent’s salt because they have the same purpose, producers, relevant public and distribution channels. Furthermore, they are in competition.

The contested ice is understood as ‘cooling ice’ whereas the opponent’s ices are understood as ‘edible ices’. The nature of these goods is different. Although both consist (partly) of frozen water, their commercial nature is different because the former is an auxiliary product used for preserving and/or cooling foodstuffs whereas the latter is a foodstuff. Their purpose and distribution channels are different. Furthermore, they are neither in competition nor complementary. Likewise, the contested ice has nothing in common with the opponent’s remaining goods in Classes 30, 32 and 33. The goods differ in nature and purpose. They have different providers and relevant public and are sold in different sections of supermarkets. They are neither complementary nor in competition. Therefore, the contested ice and the opponent’s goods in Classes 30, 32 and 33 are dissimilar.

Contested goods in Class 32

The contested beverages made from plant extracts, with stimulating, energising, draining, circulatory, slimming properties, mineral and aerated waters, non-alcoholic beverages; gel beverages are identical to the opponent’s mineral and aerated waters and other non-alcoholic drinks, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested preparations for making beverages (except coffee, tea or cocoa and milk beverages), syrups and other preparations for making beverages are identical to the opponent’s syrups and other preparations for making beverages, either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

The contested fruit beverages and fruit juices are identically contained in the opponent’s list of goods (including a synonym of the contested fruit beverages, which appear as fruit drinks in the opponent’s list).

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 highly similar are directed at the public at large.

Contrary to the applicant’s opinion that some of the goods in question require a higher degree of attention, the degree of attention is considered 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 both signs are meaningful for the English-speaking consumers in the relevant territory. This part of the public includes the anglophone countries (i.e. Ireland and Malta) as well as other countries where a significant part of the public has sufficient knowledge of English as a foreign language. For example, the Court has already confirmed that there is at least a basic understanding of English by the general public in Finland, the Netherlands and the Scandinavian countries (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23). Consequently, and considering that this factor has an impact on the conceptual comparison between the signs, the Opposition Division finds it appropriate to focus on this part of the public.

The earlier mark is a figurative sign consisting of the verbal expression ‘all i need’ in standard lower-case letters of different shades of green (lighter at the top and getting darker towards the bottom). The verbal expression is written on three lines and depicted against a light-grey rectangular background.

The contested sign is a figurative sign composed of the verbal element ‘Need’s’, written in a stylised black title-case typeface and depicted diagonally in the middle of a black incomplete circle. Between the letters ‘ee’ and the upper part of the circle, there is a black or dark-grey figurative element resembling leaves.

The verbal expression of the earlier mark, ‘all i need’, will be understood by the public under analysis as a laudatory slogan indicating that the goods in question are those that meet one’s requirements or necessities (e.g. to quench thirst or hunger). Therefore, this expression is weak.

Likewise, the verbal element ‘Need’s’ of the contested sign, despite the apostrophe, will be associated by the public under analysis as referring to what is required or necessities. In relation to the goods in question, it is a laudatory and, therefore, weak.

The grey rectangular background in the earlier mark and the black incomplete circle in the contested sign are simple geometrical shapes with a merely decorative function. For this reason, they are non-distinctive. The figurative element resembling leaves in the contested sign alludes to the characteristics of the relevant goods, since it indicates that they contain or are made of natural ingredients. Therefore, this element is weak in relation to the relevant goods.

Likewise, and contrary to the applicant’s assertion, the stylisation of the letters of the verbal elements in each sign is of a decorative nature and will not distract the consumer’s attention from the words themselves, which are still clearly perceptible.

In any event, the fact remains that 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).

Contrary to the opponent’s opinion, neither sign has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘need’/‘Need’. However, they differ in the letters ‘all’ and ‘i’ of the earlier mark and the letter ‘s’ at the end of the contested sign’s verbal element.

The signs also differ in their figurative elements and aspects, which are all secondary, for the reasons given above.

The difference in the contested sign’s apostrophe only has a limited impact, if any, on the visual comparison of the signs.

Contrary to the applicant’s opinion, the differences in the stylisation of the signs cannot outweigh their similarities and cannot lead to the conclusion that the signs are visually dissimilar. The two examples to which the applicant referred in its observations ( versus and versus ) displayed less similarities than the signs in the present case.

Although the verbal expression ‘all i need’ and the verbal element ‘Need’s’, in which the coincidence is found, are weak for the goods in question, the signs’ additional figurative elements and aspects are also of limited (if any) distinctiveness and impact. Therefore, the signs are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛NEED’, present identically in both signs.

The pronunciation differs in the sounds of the letters ‘ALL’ and ‘I’ of the earlier mark and ‘S’ at the end of the contested sign’s verbal element, which have no counterpart(s) in the other respective mark.

Therefore, although the signs’ verbal elements ‘need’/‘Need’ are (or form part of their) weak elements, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

As seen above, both signs will be associated with something that is required or necessary. Therefore, notwithstanding that this association conveys a weak concept, the signs are conceptually similar to an average degree. This is true despite the additional concept of the figurative element resembling leaves in the contested sign, as this concept results from an equally weak component of the sign.

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 relevant goods.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the relevant public in the relevant territory.

As concluded above, the contested goods are partly identical, partly highly similar and partly dissimilar to the opponent’s goods. Those found to be identical and highly similar target the public at large, who display an average degree of attention.

The earlier trade mark has a low degree of inherent distinctiveness for the relevant goods. However, the finding of a low degree of distinctiveness for the earlier trade mark does not preclude 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 involved in that assessment. Therefore, even in a case involving an earlier mark with a low degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The conflicting signs are visually similar to a below-average degree and aurally and conceptually similar to an average degree, as explained in detail above in section c) of this decision.

The similarities between the signs lie in their verbal elements ‘all i need’ and ‘Need’s’ and their concepts. Although the coinciding verbal element ‘need’/‘Need(’s)’ is weak (or form part of a weak element) in relation to the goods in question, it cannot be considered insignificant in the overall impressions created by the signs. As explained above, the signs’ verbal elements will have a stronger impact on the consumer than the signs’ figurative elements and aspects. Therefore, the verbal elements ‘all i need’ and ‘Need’s’, despite their limited degree of distinctiveness, will be elements that the relevant consumers will clearly notice and remember in the context of the signs at issue.

The signs’ differences, apart from those between the verbal elements, as mentioned above, result from non-distinctive/weak figurative elements and aspects, which have less weight and are secondary when assessing the likelihood of confusion between the marks, for the reasons given above. This justifies the conclusion that there is a likelihood of confusion.

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 undertaking or economically linked undertakings. In the present case, although the relevant public may detect the differences between the conflicting signs, the likelihood that it will associate the signs with each other is very real. Indeed, the relevant consumer is likely to perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is perfectly conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two goods ranges coming from the same undertaking.

The applicant argued that its EUTM had a high degree of distinctiveness (on account of its stylisation and the presence of the figurative element). However, it is Office practice, when a mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. A mark will not necessarily have a higher degree of distinctive character merely because there is no conceptual link with the relevant goods and services (16/05/2013, C‑379/12 P, H.EICH / SILVIAN HEACH (fig.), EU:C:2013:317, § 71). Furthermore, the figurative aspects contribute only a little (if at all) to the distinctive character of the contested sign, for the reasons given above. Consequently, the applicant’s argument must be disregarded.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking part of the public in the relevant territory and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 8 828 378. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or highly similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sylvie ALBRECHT

Martin MITURA

Benoit VLEMINCQ

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.