OPPOSITION No B 2 029 661
Marc Lenaerts, Morpheusstraat 17, 2600 Berchem, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)
a g a i n s t
Pure Health and Fitness sp. z o.o., Ul. Złota 59, 00-120 Warsaw, Poland (applicant), represented by Aomb Polska Sp. z o.o., Emilii Plater 53, 28th floor, 00 113 Warszawa, Poland (professional representative).
Class 32: Isotonic beverages, beverages (non-alcoholic-), mineral water (beverages -), soda water.
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some of the goods of European
Union trade mark application No
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 4 357 893.
The goods on which the opposition is based are the following:
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
The contested goods are the following:
Class 32: Isotonic beverages, beverages (non-alcoholic - ), mineral water (beverages - ), soda water.
Contested goods in Class 32
Beverages (non-alcoholic -), mineral water (beverages - ) are identically contained in both lists of goods.(including synonyms).
The contested isotonic beverages, soda water are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.
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.
Earlier trade mark
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 element ‘JATOMI’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.
The element ‘ATOMIC’ of the earlier mark will be understood to mean, inter alia, ‘Relating to or using the energy released in nuclear fission or fusion’ and ‘Of or forming a single irreducible unit or component in a larger system’ (information extracted from Oxford Dictionaries on 20/02/2017 at https://en.oxforddictionaries.com/definition/atomic) by part of the relevant public because the word exists as such (e.g. in English) or is very similar (e.g. in Portuguese and Italian) in some languages of the relevant territory. For another part of the public, the word has no meaning. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
Visually, both signs are word marks composed of six letters and they coincide in the letter sequence ‘ATOMI’. However, they differ in the contested sign’s first letter, ‘J’, and in the final letter, ‘C’, of the earlier mark, which has no counterpart in the contested sign.
Therefore, the signs are visually similar to an average degree, as they coincide in five out of their six letters, written in the same sequence.
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 ‛ATOMI’, present identically in both signs. Both words have the same number of syllables and the same rhythm of pronunciation. The pronunciation differs in the sound of the letter ‘C’ of the earlier sign and the first letter, ‘J’, of the contested mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although part of the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the part of the relevant public that will not understand the earlier mark, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
Global assessment, other arguments and conclusion
The goods are identical.
The signs are visually and aurally similar for the relevant public. They are both one-word marks and coincide in five letters (out of six letters) in the same sequence.
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).
It should be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).
Considering all the above and bearing in mind the average degree of distinctiveness of the earlier mark, it is considered that the visual and aural differences are not sufficient to counterbalance the visual and aural similarities between the marks.
It follows from the above that there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 357 893. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right European Union trade mark registration No 4 357 893 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).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.