of the Fourth Board of Appeal

of 2 December 2015

In Case R 1251/2015-4

The Coca-Cola Company

One Coca-Cola Plaza

Atlanta, Georgia 30313

United States of America

Opponent / Appellant

represented by SIMMONS & SIMMONS LLP, CityPoint One Ropemaker Street, EC2Y 9SS London, United Kingdom


Modern Industrial & Trading Investment Co. Ltd (Mitico)

Reef Damascus, Doma Aldwair, Free Zone



Applicant / Respondent

represented by MALAMIS & ASSOCIATES, PALAIA TATOIOU 8, KIFISIA, 146 71 Athens, Greece

APPEAL relating to Opposition Proceedings No B 1 734 790 (Community trade mark application No 9 091 612)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following


Summary of the facts

  1. By an application filed on 10 May 2010, Modern Industrial & Trading Investment Co. Ltd (Mitico) (‘the applicant’) sought to register the figurative mark

for the following list of goods (‘the contested CTM application’):

Class 29 – Yoghurt. Meat, fish, poultry and game, meat extracts. Preserved, frozen, dried and cooked fruits and vegetables. Jellies, marmalades, fruit preserve. eggs. Preserved and pickles. Salads in vinegar. Potatoes chips;

Class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, confectionery, candies, ice-creams, honey, melassa syrup, dough, flour, baker's yeast, baking-powder, salt, mustard, vinegar, pepper, sauces (condiments), spices, specifically excluding pastry and bakery products. Ice. Chocolate. Gum. All kinds of food appetizers made from corn and wheat, specifically excluding pastry and bakery products;

Class 32 – Mineral and natural water, barley beverage, non-alcoholic beers, non-alcoholic aerated waters of all kinds and flavors, particularly with (cola - pineapple -mango- orange - lemon - without flavor - apples - fruit cocktail formed - Tropical - energy drink - strawberry - fruits - lemonade – pomegranate…) taste, and all types of non-alcoholic natural fruit juice drinks (apples - Lemon - orange - fruit - cocktail - pomegranate- pineapple - mango..), and non-alcoholic juice concentrates and concentrates for making non-alcoholic juice in all types, powders and crushes for making non-alcoholic syrup.

  1. On 14 October 2010, the Coca-Cola Company (‘the opponent’) filed a notice of opposition against the contested application in its entirety, pursuant to Article 8(1)(b) and 8(5) CMTR. The opposition was based on the following earlier trade marks:

CTM 8 792 475

CTM 3 021 086

CTM 2 117 828

CTM 2 107 118

UK 2 428 468

  1. The earlier Community trade mark No 3 021 086 is registered inter alia for ‘non alcoholic beverages’. All other earlier trade marks are registered inter alia for ‘non-alcoholic drinks’ in Class 32.

  2. On 26 September 2011, the Opposition Division rejected the opposition in its entirety. It held that there is no likelihood of confusion due to the dissimilarity of the signs, assuming that the goods at hand are identical. It further held that the earlier Community trade marks enjoyed reputation for ‘beverages, in particular soft drinks and especially a carbonated soft drink coloured usually with caramel and flavoured usually with extracts from kola nuts’. However, it found that there was no link in the meaning of Article 8(5) CTMR due to the dissimilarity of the signs.

  3. On 17 October 2011, the opponent filed a notice of appeal against that decision. Regarding the question as to whether the applicant takes unfair advantage of the opponent’s so-claimed reputed marks, it argued as follows: