OPPOSITION No B 1 893 117

Rockstar, Inc., 4730 S. Fort Apache Road Suite 300, 89147 Las Vegas, United States of America (opponent), represented by Osborne Clarke LLP, One London Wall, EC2Y 5EB London, United Kingdom (professional representative)

a g a i n s t

Town Music S.L., Altozano 2, 35200 Telde, Las Palmas, Spain (applicant), represented by Roeb y Cia S.L., Plaza de Cataluña 4 - 1º, 28002 Madrid, Spain (professional representative).

On 31/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 893 117 is upheld for all the contested goods.

2. European Union trade mark application No 9 925 702 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 9 925 702 . The opposition is based on, inter alia, the United Kingdom non-registered trade mark for which the opponent invoked Article 8(4) EUTMR.

The opposition is based on more than one ground (the opponent also invoked Article 8(1)(b) and Article 8(5) EUTMR and it also invoked a well-known mark according to Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR in the sense of Article 6bis of the Paris Convention) and on more than one earlier right. The Opposition Division finds it appropriate to first examine the opposition in relation to Article 8(4) EUTMR in connection with the opponent’s non-registered trade mark , used in the course of trade in the United Kingdom.

PRELIMINARY REMARKS

In the notice of opposition filed on 31/08/2011, the opponent invoked the non-registered mark , used in the course of trade in the European Union in respect of the following goods: clothing, footwear and headgear; sports drinks and energy drinks.

However, in its facts, evidence and arguments in support of the opposition, which were filed during the time limit for substantiation of the earlier rights, the opponent stated that the above mentioned non-registered mark has been used in the United Kingdom in relation to non-alcoholic beverages and is protected by common law rights by virtue of the law of passing off, while other EU countries protect unregistered rights by virtue of laws of unfair competition.

Furthermore, in its submissions of 30/01/2020, following a limitation of the list of goods of the contested European Union trade mark application, the opponent limited the scope of its unregistered trade mark to sports drinks and energy drinks. Therefore, the Opposition Division will examine the opposition filed under these grounds in relation to the opponent’s non-registered trade mark, used in the course of trade in the United Kingdom in connection with sports drinks and energy drinks.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 28/04/2011. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for sports drinks and energy drinks.

On 10/01/2012, the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. However, the Opposition Division also notes that, some of the evidence, such as Annex Q, actually derive from generally accessible sources within the public domain, indeed, this particular annex is an article from an online magazine and as such its contents have been made publicly available. The evidence consists, in particular, of the following documents:

 Annex B2: Print-outs of the opponent’s international websites, including a website in the United Kingdom, displaying the opponent’s mark on energy drinks with a variety of flavours. The print-outs are dated 02/08/2011.

 Annex C: Extract from Wikipedia dated 17/10/2011, stating that the energy drink bearing the opponent’s mark was created in 2001 in the United States of America and is available in twenty countries.

 Annex M: AG Barr Soft Drinks report on sales of Rockstar energy drinks in the United Kingdom in the period from November 2007 until July 2008, which shows a consistent growth of significant sales. In addition, there is another report by SCB Partners from June 2009, which states that the opponent generates considerable awareness in the United Kingdom’s market with an extensive schedule of events, mainstream press and media initiatives, as well as mainstream TV coverage through sponsorship of sport events. According to the document, Rockstar energy drink was present and sampled in 112 events in June 2009. The document contains the total number of energy drinks which were sampled across the United Kingdom, as well as an impressive number of ‘direct consumer impacts’ [sic] that were made through all event activities. The documents are accompanied by photographs of the events and description thereof, by way of example: sporting events, such as the British Speedway Grand Prix (viewed by over 40 000 spectators), British National Bodybuilding Federation and Nottingham tennis masters (with 5 000 audience); a music festival, which is described as the UK’s biggest heavy metal event; screening parties; nationwide street sampling and a charity event, during which the opponent was providing refreshments. In all the events photographs, there are big posters/banners on which the earlier mark is depicted, such as and . The Annex also contains a compilation of advertisements published in the press in June 2009, accompanied by information regarding the circulation numbers of the respective newspaper or magazine. By way of example, a Fast Car magazine with circulation of 45 000 containing a half page advertisement of Rockstar energy drinks with a review rating 5 out of 5, or a sports magazine with 20 000 monthly circulation containing a double page with Rockstar energy drinks advertisement.

 Annex N2: Announcement prepared for release on 30/09/2009 stating that the opponent will continue to be the title sponsor of the 2009 Worldwide Music festival, touring, inter alia, 6 cities in the United Kingdom, including London, and will be sampling its products during the festival.

 Annex O: Gross revenue sales figures in the period 2008 – 2010 for several EU member states, including the United Kingdom. The document does not contain information regarding the product or the trade mark for which the sales figures refer, nor does it indicate the source of information.

 Annex Q: Article in a UK electronic media Food & Drink Innovation Network (a cross between a best practice club and a trade association) dated 02.06.2011 regarding the launch of a new female-targeted Rockstar energy drink. The article states that ‘since launching in the UK in 2007 the Rockstar brand has gone from strength to strength, valued at £12.5m, it is now growing at +49 percent’ (as mentioned above, this document is accessible to the public in general).

The abovementioned evidence indicates that the opponent’s mark was used in the course of trade of more than local significance before the relevant date and in the relevant territory, as a trade mark in connection with energy drinks.

By ‘more than mere local significance’ it is meant that the sign must have a real presence on its relevant market, must actually be used in a sufficiently significant manner in the course of trade and must be used in a substantial part of that territory (more than a town or a province) (29/03/2011, C-96/09 P, ‘Bud’, § 158 and 24/03/2009, T-318/06 to T-321/06, ‘General Optica’, § 34).

In the present case, the extent of the use shown is unequivocally more than merely local from the geographical point of view. The consistent high number of sales (Annex M), together with the diverse events during which energy drinks bearing the opponent’s mark were sampled and advertised, as well as the presence of advertisements in various media; all of them throughout the United Kingdom, are relevant indicators of use to a significant extent in the course of trade from November 2007 until June 2009. The trade article (Annex Q), although dated just 1.5 months after the relevant period can also be taken into consideration as it refers to use prior to the relevant date, namely it shows the relatively high value (£12.5m) of the opponent’s mark and its percentage growth (+49%) since the launch in the UK in 2007.

Although some of the documents seem to originate from the opponent’s partners, namely the report by SCB Partners on the opponent’s awareness through extensive events (Annex M), the information therein is supported by the events photographs, which clearly show that the opponent’s mark was extensively advertised in relation to energy drinks. Given the variety of the promotional event activities, their geographical diversity and significance (some of them are nationwide sport events), combined with the significant exposure of the public to the sign, as it was displayed on big posters/banners placed at central places during the events, the Opposition Division considers that the evidence in its entirety is sufficient to prove prior use in the course of trade of more than mere local significance in the United Kingdom of the opponent’s non-registered trade mark in relation to energy drinks.

However, the evidence does not prove that the sign has been used in relation to the remaining goods claimed by the opponent, namely sports drinks. Although there is a certain similarity between energy drinks and sports drinks, it is not appropriate to accept proof of use for ‘different’ but somehow ‘linked’ goods as the concept of similarity of goods is not a valid consideration within this context. Consequently, the examination of the opposition will proceed on the basis of energy drinks only.

b) The right under the applicable law

As seen above, the opposition under Article 8(4) EUTMR is based on, inter alia, the non‑registered trade mark used in the course of trade in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

The Opposition Division notes that within the prescribed deadline, the opponent satisfied the requirements of this ground via its Annex P which included:

- Narrative legal text, ‘The law of Passing-off’ (Sweet & Maxwell) setting out the classical ‘trinity’ of passing-off (namely goodwill, misrepresentation and damage)

Considering the common-law nature of ‘passing-off’, the submission of extracts from legal literature such as the above is sufficient. As such the applicant’s comments that the opponent has not proven the right to prohibit the use of a subsequent mark, have to be set aside.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its mark.

Goodwill is normally proved by evidence of, inter alia, trading activities, advertising and consumers’ accounts. Genuine trading activities, which result in acquiring recognition by the public and gaining customers, are usually sufficient to establish goodwill.

The evidence examined above indicates that, by the filing date of the contested trade mark, the opponent’s energy drinks had been effectively present in the UK market. The Opposition Division finds that the evidence is sufficient to prove that the opponent enjoys goodwill for its energy drinks in the mind of the target public for the sign on which the opposition is based.

c) The opponent’s right vis-à-vis the contested trade mark

Misrepresentation (passing off)

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent.

The contested trade mark must be likely to lead the public to believe that goods to be offered by the applicant are the opponent’s goods. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

Therefore, a comparison of the signs is required.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared to the goods for which the opponent has shown that it has acquired goodwill through use.

1. The goods

After the limitation requested by the applicant on 18/11/2019, the opposition is directed against the following goods of the contested trade mark:

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

The opponent’s non‑registered trade mark is used for: energy drinks.

The contested other non-alcoholic drinks include, as a broader category, the opponent’s energy drinks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested mineral and aerated waters; fruit drinks and fruit juices are similar to the opponent’s energy drinks because they have the same purpose (to quench one’s thirst and provide for refreshment), distribution channels and end users. Moreover, they are in competition.

The contested other preparations for making beverages are similar to the opponent’s energy drinks as they usually coincide in producer, relevant public and distribution channels.

The contested syrups are mixed with water or other beverages to make refreshments. To that extent, the purpose of the contested goods coincides with the opponent's energy drinks. They target the same public and can share the same distribution channels. Therefore, they are similar to a low degree.

2. The signs

Earlier sign	Contested sign

The relevant territory is the United Kingdom.

The earlier mark is a figurative mark composed of the string of letters ‘ROCKST‑R’ depicted in fairly standard stylised upper case letters. The seventh element in the string depicts a star. It is highly likely that the relevant public will perceive the earlier mark as ‘ROCKSTAR’ given that the figurative element consists of a star replaces the letter ‘A’ in the word ‘STAR’.

The earlier mark will be perceived as the English expression ‘ROCK STAR’ which means ‘a pop musician, usually a singer, who is very famous’ (information extracted from Collins English Dictionary on 16/03/2030 at https://www.collinsdictionary.com/dictionary/english/rock-star). Considering that the relevant goods are energy drinks, the word elements are distinctive as they do not refer to any characteristics of the goods.

Besides the literal meaning of the verbal elements ‘HEAVY ROCK’ of the contested sign as a rock/stone, which is heavy, it is highly likely that, especially in combination with the black background and the star device, they are perceived as a music genre that is ‘lighter than heavy metal, yet harder than rock’ (information extracted from Urban Dictionary on 16/03/2030 at https://www.urbandictionary.com/define.php?term=Heavy%20rock). In any event, the word elements of the contested sign are distinctive since there is no link with the relevant goods.

Both signs contain a figurative element depicting a star, which will be seen as decorative, or as an indication of the quality of the goods. Either way, this element is not particularly distinctive. In addition, 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).

The contested sign contains also other verbal elements in much smaller, barely noticeable font, namely ‘SINCE 1999’ and ‘FIVE STAR ENERGY’, which provide information regarding the characteristics of the relevant goods; therefore, they are non-distinctive.

The figurative element and the verbal element ‘ROCK’ in the contested sign are the dominant elements as they are the most eye-catching.

Visually, the signs coincide in the verbal element ‘ROCK’ and in the figurative element depicting a star. However, the signs differ in the verbal elements ‘STAR’ of the earlier mark and ‘HEAVY’ of the contested sign. The contested sign also differs from the earlier mark in its stylisation, colours and the non-distinctive and barely noticeable word elements ‘SINCE 1999’ and ‘FIVE STAR ENERGY’.

Therefore, the signs are visually similar to a lower than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘ROCK’, present identically in both signs. The pronunciation differs in the sound of the verbal elements ‘STAR’ of the earlier mark and ‘HEAVY’ of the contested sign. The elements ‘SINCE 1999’ and ‘FIVE STAR ENERGY’ of the contested sign which have no counterparts in the earlier sign are less likely to be pronounced due to their non-distinctive character and barely noticeable font.

Therefore, the signs are aurally similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. The signs are conceptually similar to the extent that they refer to a music genre and contain a similar, although non-distinctive, figurative element depicting a star. Therefore, the signs are conceptually similar to a lower than average degree.

3. Global assessment of the conditions under the applicable law

It follows from the above that the goods applied for are either identical or similar to the opponent’s goods. The signs also have some relevant similarities, in particular their common verbal element ‘ROCK’ and the star device. Under these circumstances, the Opposition Division finds that there is a risk that the applicant’s goods will be taken to be the opponent’s.

d) Damage

It has been concluded that, given the similarities between the signs in dispute and the identity and similarity of the goods in question, the opponent’s customers are likely to perceive the goods to be marketed under the contested trade mark as originating from the opponent.

While this does not necessarily lead to damage being caused in all possible cases, damage is the most likely result whenever, as in the present case, the opponent has demonstrated that it enjoys goodwill in the earlier sign and the contested sign is similar to the opponent’s mark, thus leading consumers to attribute the contested sign to the opponent. The opponent is not obliged to prove that it has suffered actual damage. It is sufficient that damage is likely. A misrepresentation that leads the relevant public to believe that the applicant’s goods are the opponent’s is intrinsically likely to damage the opponent if the parties’ fields of business are reasonably close. In the present case, it has been concluded that the goods in question are identical and similar and that a significant number of the opponent’s customers would consider the goods offered by the applicant under the contested trade mark as originating from the opponent.

Under those circumstances, it is likely that the opponent would lose sales because its customers — who intend to buy its goods — would erroneously buy the applicant’s goods.

The Opposition Division considers that, in the absence of any indications to the contrary, the opponent is likely to suffer damage.

e) Conclusion

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier sign opponent’s non-registered trade mark , used in the course of trade in the United Kingdom. Therefore, the contested trade mark must be rejected for all the contested goods.

As the opposition is entirely successful on the grounds of Article 8(4) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition is based.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Vanessa PAGE

Lidiya NIKOLOVA

Christian STEUDTNER

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.