CANCELLATION No 15 059 C (INVALIDITY)

Power Horse Energy Drinks GmbH, Fiedlerstrasse 10, 4041 Linz, Austria (applicant), represented by Schönherr Rechtsanwälte GmbH, Schottenring 19, 1010 Wien, Austria (professional representative)

a g a i n s t

S.C. MW Marketing & I.P. S.r.l., Strada Stefan cel Mare, nr. 38-40, cladire administrativa, birou 1.03, etaj 1, Valenii de Munte, judet Prahova, Romania (EUTM proprietor), represented by Cabinet Individual Negomireanu Livia, Livia Negomireanu, sos. Nicolae Titulescu 94, bloc 14 A, S.C. 4, ap 127, sector 1, Bucharest, Romania (professional representative).

On 25/03/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 10 942 514 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 10 942 514 (figurative mark). The application is based on, inter alia, international trade mark registration No 1 037 284 (figurative mark) designating European Union. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and (5) EUTMR and Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested goods are identical to the goods of the earlier marks and the signs are similar. The consumer’s level of attention when buying such every-day goods is usually low. The ‘POWER HORSE’ trademarks are trademarks with reputation for energy drinks. The initial proprietor of the trademark entered the market of energy drinks in 1994. Through its longstanding use the trademark ‘POWER HORSE’ has become well-known for energy drinks on international scale. The product is sold in more than fifty countries in the world. Each year more than 100 Mio cans are produced. Over time, the range of products was expanded, more varieties, namely Energy Cola, Sugarfree and Zero Sugar were introduced. The applicant provides the annual advertising spending in 2011-2015. The cancellation application is also based on the company name/non-registered trademarks/trade names ‘POWER HORSE’.

The applicant submits evidence of reputations of the earlier marks. The filed evidence will be listed later if necessary.

The EUTM proprietor argues that the trademarks are different from a phonetic, visual and conceptual point of view. Not just the figurative elements of the signs but also the verbal elements ‘Energy drink revigoreaza mintea si corpul’ of the contested mark make a big difference between the signs. Although the products covered by the conflicting trademarks are identical or similar, the differences of the signs can determine the avoidance of the confusion risk. The submitted evidence is not sufficient as a proof of the reputation of the earlier marks. Furthermore, the mere fact that the two conflicting trademarks have in their composition the figurative element of the horse does not automatically imply that the proprietor of the contested trademark had the intent of gaining an undue profit from the repute or distinctive character of the trademark. The conflicting trademarks are sufficiently different for the public not to make the association between these trademarks. As a result, the proprietor does not have the intention to take advantage from the repute of the earlier trademarks.

The applicant underlines the similarities of the signs. It argues that the reputation has sufficiently been proven. Furthermore, the unfair advantage gained from and detriment caused to the repute of the earlier trademarks has been also proven.

The EUTM proprietor argues that the evidence shows that ‘POWER HORSE’ has been used for energy drinks. Energy drinks are not general consumer drinks but products addressed to specialized consumers, those who have a high degree of attention. Furthermore, it repeats its arguments supporting the similarity of the signs and the conditions of the Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international trade mark registration No 1 037 284 ‘POWER HORSE’ (figurative mark) designating European Union.

1. The goods

The goods on which the opposition is based are the following:

Class 32: Non-alcoholic drinks.

The contested goods are the following:

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

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 32

(Other) non-alcoholic beverages are identically contained in both lists of goods (including synonyms).

The contested mineral and aerated waters; energy drinks; fruit beverages and fruit juices are included in the broad category of the applicant’s non-alcoholic drinks. Therefore, they are identical.

The contested syrups and other preparations for making beverages are similar to the applicant’s non-alcoholic drinks. They share the same distribution channels, are produced by the same undertaking and are offered to the same public..

The contested beers are in competition with the applicant’s non-alcoholic drinks. They serve the same purpose and coincide in distribution channels, public and producers. Therefore, the goods are highly similar.

2. 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 similar are directed at the public at large.

The degree of attention may vary from below average to average. As these are cheap goods for daily consumption, the consumer will not display a high degree of attention as claimed by the EUTM proprietor.

3. 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 proceedings for a declaration of invalidity against any 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

The word elements of the signs are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the Hungarian-, Polish- und Italian-speaking part of the public.

The earlier mark is a figurative mark which consists of the word elements ‘POWER’ and ‘HORSE’ in black colour. The figurative element of the sign represents a black horse, placed between two red triangles. The mark is illustrated in the colours black and red.

The contested mark is a figurative mark which contains of the word elements ‘GOLDEN’ and ‘HORSE’ in golden colour. The figurative element represents a gold horse, placed on a black beverage can. The depiction of the can is non-distinctive for the relevant goods. The golden banner separating the word elements from the horse is merely decorative. The mark is represented in the colours black and gold.

The proprietor argues that the mark has further verbal elements as ‘Energy drink’ and ‘revigoreaza mintea si corpul’. The additional verbal elements are depicted in significant smaller characters. The word elements ‘revigoreaza mintea si corpul’ are almost not visible and not to noticed. Therefore, they are negligible.

The word elements of the signs have no meaning for the relevant public and are, therefore, distinctive.

As regards the earlier sign, it is composed of distinctive verbal elements and the representation of a horse and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal elements and the horse are more distinctive than the figurative elements.

The element ‘GOLDEN HORSE’ and the figurative element representing a horse in the contested sign are the dominant elements as they are the most eye-catching.

Visually, the signs coincide in the representation of a horse, almost in the same way. The horses are oriented in the same direction and they are prancing on their hind feet. The signs coincide in the second verbal element ‘HORSE’ of the signs. Furthermore, the verbal elements are represented in two lines and in uppercase letters. The additional elements of the earlier mark (two red triangles) and of the contested mark (golden banner, shape of a can) are of a purely decorative nature. The additional verbal elements of the contested sign are not noticeable; they are negligible.

Therefore, the signs are similar at least to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory (Hungarian, Polish, Italian), the pronunciation of the signs coincides in the sound of the letters ‛HORSE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛POWER’ of the earlier sign and ‘GOLDEN’ of the contested mark. The verbal elements ‘POWER HORSE’ and ‘GOLDEN HORSE’ have the same vowels ‘O-E-O-E’. Therefore, the marks have the same rhythm and intonation. The figurative elements and the negligible verbal elements of the contested sign will not be pronounced.

Therefore, the signs are similar to a high degree.

Conceptually, neither of the word elements of the signs has a meaning for the public in the relevant territory. Since the figurative elements in the signs will be perceived as ‘a prancing horse’, the signs evoke the same concept. As the word elements are meaningless for the relevant public, the signs will be perceived conceptual identically.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 applicant, 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 applicant 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 Hungarian-, Polish- und Italian-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods at issue are partially identical and partially similar to various degree.

Even if the word elements are meaningless for the relevant public, the signs coincide visually and aurally in the second verbal element ‘HORSE’. The verbal element of the earlier sign and the dominant verbal element of the contested sign are depicted in two lined. The graphical representation of the horses is highly similar, almost identical, and very prominent in size and position in both signs. The public recognises in both signs the representation of a prancing horse. The relevant public will perceive them firstly when seeing the signs, especially as the words are meaningless for them. Therefore, the signs have the same concept. The word elements do not evoke any concept that would help the consumer to distinguish between them.

The proprietor argues that the sign are different from phonetic view. The additional verbal elements of the contested sign are negligible. The dominant verbal elements are visually and phonetically highly similar to the verbal elements of the earlier mark.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The relevant consumer will perceive the silhouette of the prancing horse and the second word element ‘HORSE” in both signs. The Cancellation Division is of the opinion that the representation of prancing horses, which are visually very similar and convey an identical concept, will easily be retained by consumers in their memory but not even the details (12/11/2015, T-449/13, Wisent, EU:T:2015:839).

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).

Considering all the above, there is a likelihood of confusion on the part of the Hungarian-, Polish und Italian-speaking part of the public. 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 trade mark.

Therefore, the application is well founded on the basis of the applicant’s international trade mark registration No 1 037 284 designating the European Union. It follows that the contested trade mark must be declared invalid for all the contested goods.

Since the cancellation application 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 applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the international trade mark registration No 1 037 284 designating the European Union leads to the success of the application and the cancellation of the contested trade mark for all the goods against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 8(5) and Article 8(4) EUTMR in conjunction with Article 60(1)(a) and (c) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

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

The Cancellation Division

Elena NICOLAS GOMEZ

Judit NÉMETH

Plamen IVANOV

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 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.