OPPOSITION Nо B 3 124 390

 

Marabans, S.L., Calle Dels Sestadors, 23, 07458 Can Picafort (Baleares), Spain (opponent), represented by A.A. Manzano Patentes & Marcas, S.L., Paseo del Pintor Rosales, 44 Bajo, 28008 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Mini Brille Sia, Susejas Iela 29, 1064 Riga, Latvia (applicant), represented by Patpol SP Z.O.O., Nowoursynowska 162 J, 02-776 Warszawa, Poland (professional representative).

On 28/07/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 124 390 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 19/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 205 215 (figurative mark), namely against all the goods in Class 30. The opposition is based on EUTM registration No 6 986 863, (figurative mark). The opponent invoked  Article 8(1)(a) EUTMR and 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 and services on which the opposition is based are, inter alia, the following:

 

Class 30: Coffee and tea.

The contested goods are the following:

 

Class 30: Tea.

The contested Tea is identically contained in both lists of goods. Hence, these goods 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 or services in question.

 

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

 

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 earlier mark is a figurative mark containing the verbal element ‘MARABANS’ depicted in standard white upper-case letters. Below this, between two white dots, are the verbal elements ‘COFFEE & TEA’, depicted in smaller standard upper-case letters. Both verbal elements are placed against a black circular background, which is a basic, non-distinctive, geometrical shape. The verbal element ‘MARABANS’ is meaningless and has an average degree of distinctiveness. However, it is the most eye-catching and therefore the dominant element in the earlier mark. Bearing in mind that the relevant goods are tea in Class 30, the verbal element ‘TEA’, which is in wide-spread use in the relevant territory and has many equivalents in other European languages (Té in Spanish, Tee in German, Thé in French etc.), will be understood by the vast majority of the relevant public as describing the nature of the goods and is therefore non-distinctive. The verbal element ‘COFFEE’, due its equivalents in other languages (e.g. café in French, Portuguese or Spanish, koffie in Dutch, Kaffee in German, kaffe in Danish), and/or due to the widespread use of the word ‘coffee’, will be perceived as referring to ‘coffee’. ‘COFFEE & TEA’ form a common description of the kind of goods offered by the opponent under its mark and are therefore of a very low degree of distinctiveness, if any, in relation to these goods. The white dots at each side of the verbal element ‘COFFEE & TEA’, if perceived at all, are merely decorative and cannot indicate the commercial origin of the goods.

The contested sign contains a stylised, fanciful floral element of little leaves, placed in a circle with a green background. The mentioned circle is surrounded by another circle in which three words are placed, written with a green font, and read from the top they form the inscription MARA TEA NATURAL. This white circular background is a basic geometrical shape and hence non-distinctive. Additionally, in the circle with the white background, green stars are placed, which are situated symmetrically – three on the right and three on the left. The contested sign’s verbal element ‘MARA’ has no meaning in relation to the relevant goods, (even if it might be understood by part of the relevant public as a name) and it therefore has a normal degree of distinctiveness. Bearing in mind that the relevant goods are tea, the element ‘TEA’ is non-distinctive in relation to the goods.

The element ‘‘NATURAL’ is of Latin origin (‘natura’) with the meaning of ‘nature’ or ‘character’. It will be understood by the vast majority of the public since this word (in English and French), or its close equivalents, are part of European Union languages (e.g. ‘natura’ in Italian, ‘naturaleza’ and ‘natura’ in Spanish, ‘Natur’ in German) as, by analogy, has been stated in case-law as regards the word ‘natura’ (24/03/2011, T 54/09, Linea Natura Natur hat immer Stil, EU:T:2011:118, § 55; 29/09/2011, T 107/10, Naturaviva, EU:T:2011:551, § 35). Moreover, ‘nature’ (as ‘natural’) is a frequently used word in the field of grocery products inter alia, to indicate the naturalness of the products’ ingredients, and of the goods used for human consumption. Consequently, it will be perceived as strongly allusive to the natural composition of the relevant goods and, therefore, is very weak. The same holds true for the green font used, as the colour green will be perceived as referring to nature and such depictions are commonly used in relation to food stuff products.

The figurative element being stylised leaves will likely be perceived as a reference to the origin of the relevant goods, namely the tea plant. It emphasises the origin of the goods and is hence only distinctive to a low degree. The green stars will also be understood as a reference to the quality of the products and are hence of a mere laudatory nature and non-distinctive. The verbal element ‘MARA’ of the contested mark and the stylised tea leaves are the co-dominant elements in this sign. Furthermore even if the green colour used and the stars amount to weak/non-distinctive elements, their visual impact cannot be overlooked as they will catch the average user’s attention because of their size in the trade mark as a whole.

 

Visually, the signs coincide in the letters ‘MARA’ of the distinctive verbal elements ‘MARABANS’/‘MARA’ present in the earlier mark and the contested sign respectively. The signs also coincide in the very weak, if not non-distinctive verbal elements ‘TEA’ present in the earlier trade mark and the contested sign respectively. Visually, the earlier mark and the contested sign coincide furthermore in the circular backgrounds, which are however non-distinctive.

The signs differ in the letters ‘BANS’ of the earlier mark, placed in 5th, 6^th, 7th and 8th positions respectively, in the verbal element ‘MARABANS’. Hence, the verbal elements ‘MARABANS’/‘MARA’ differ clearly in their lengths. The signs also differ in the verbal elements ‘COFFEE’ and ‘NATURAL’. The contested sign’s stylised tea leaves depicted on a green background in a white circle with green stars have no counterpart in the earlier trade mark. Furthermore the earlier mark also differs from the contested sign in the colour of its background and in the positioning of their respective verbal elements within the signs. Specifically, in the earlier mark, the distinctive verbal element ‘MARABANS’ is placed in the middle of the black circle, whilst the distinctive verbal element ‘MARA’ appears at the top of the contested sign against a white circular background.

Therefore, taking into account all the aforementioned similarities and differences between all the elements of the signs, including the positions/differences between the most distinctive verbal elements, ‘MARABANS’ and ‘MARA’ respectively, the signs are visually similar – at most – to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛MARA’ of their distinctive verbal elements ‘MARABANS’/‘MARA’. However, the differences in the letters ‘BANS’ at the end, completely changes the rhythm and intonation of these verbal elements. Furthermore, if the additional elements of the signs were pronounced, there are important aural differences between ‘COFFEE’ and ‘NATURAL’ in the signs respectively.

However, the most important differences lie in their distinctive elements ‘MARABANS’/‘MARA’ which, even though they share the same beginnings, are quite different given their different endings, which change their intonations and rhythms. Therefore, the signs are aurally similar to a low degree.

Conceptually, the most distinctive elements of the signs, ‘MARABANS’/‘MARA’, are meaningless, so in this context a conceptual comparison is not possible and does not influence the assessment of the similarity of the signs. Even where a conceptual comparison is possible, namely in relation to the common element ‘TEA’, this results in a very weak (or even no) conceptual similarity due to very weak or even non-distinctive character of this element.

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 has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the earlier mark, as stated above in section c) of this decision.

 

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).

The goods were found to be identical. They target the public at large. The degree of attention is average. Visually, the signs are similar, at most, to a low degree and aurally they are similar to a low degree. The signs’ most distinctive verbal elements are meaningless, whilst the remaining elements ‘TEA’, although they refer to concepts, lead only to a very weak (or even no) conceptual similarity due to very weak or even non-distinctive character of these elements.

The Court has stated that, 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 (22/09/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27).

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T 488/07, Egléfruit, EU:T:2010:145). Therefore, the visual aspect plays a greater role in the global assessment of the likelihood of confusion.

As mentioned above in section c) of this decision, the signs differ in their graphic depictions and in the positioning of their respective verbal elements ‘MARABANS’/‘MARA’. Moreover, the depiction of the stylised tea leaves (although weak) in the centre of the contested sign is striking and creates quite a different overall visual impression from the earlier trade mark. Furthermore, the additional elements ‘COFFEE & TEA’, in the earlier mark, have an impact to the overall graphic impression of the earlier sign.

The signs’ distinctive verbal elements ‘MARABANS’/‘MARA’, despite having two identical syllables, clearly differ in their lengths. Furthermore, they also differ aurally in their rhythm and intonations, and their endings look and sound quite different from each other.

The considerable differences described above are particularly relevant when assessing the likelihood of confusion between the signs, and they are sufficient to dispel any likelihood of confusion. The Opposition Division considers that consumers will be able to safely distinguish between the signs.

There is also no reason, contrary to the opinion of the opponent, to conclude that consumers would, even if they did not confuse the marks directly, assume that the goods bearing the marks in question originate from the same undertaking, even though the goods are identical. The graphic depictions of the marks are very different, and the positions of their distinctive elements is also very different. Furthermore, the co-dominant stylised tea leaves in the contested sign are very striking and bear no similarity with any of the elements of the earlier mark. Therefore, the relevant consumers have no reason to assume that the marks are variants of each other, designating different lines of goods.

The opponent refers to a previous decision of the Office to support its arguments, (18/10/2005, B 6 63 718). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the opponent is not relevant to the present proceedings. This is because the signs are not comparable. In the case referred to by the opponent, the signs contained a single verbal element, and only one of the earlier marks contained an additional figurative element. In the case at issue, however, the contested sign’s co-dominant stylised tea leaves, as well as all the other elements present in the signs, are configured in a different manner, and the overall impressions created by the earlier mark and the contested sign are quite different. Therefore, the same reasoning and outcome cannot be expected to apply in the case at issue.

Considering all the above, even if the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

 

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Raphaël MICHE

Karin KLÜPFEL

Peter QUAY

 

 

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.