CANCELLATION No 9603 C (INVALIDITY)

Hellenic Milk and Flour Industry S.A., Iera Odos, 88, 10447 Athens, Greece (applicant), represented by G.S. Kostakopoulos & Collaborateurs, 18 rue Akadimias, 10671 Athens, Greece (professional representative)

a g a i n s t

Starbucks Corporation doing business as Starbucks Coffee Company, P.O. Box 34067, Seattle, Washington 98124-1067, United States of America (EUTM proprietor), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

On 12/04/2016, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 346 012 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 11 346 012, ‘STARBUCKS REFRESHA’. The application is based on

• EUTM trade mark registration No 5 764 261 for the figurative mark

• Greek trade mark registration No 181 614 for the figurative mark

• Greek trade mark registration No 111 084 for the word mark ‘REFRESH’

The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested European Union trade mark ‘STARBUCK´S REFRESHA’, which is registered for identical and similar goods in Classes 30 and 32, is highly similar to the applicant’s earlier ‘REFRESH’ marks. The applicant´s signs consist essentially of the word ‘REFRESH’ which shares seven of the letters of the contested sign ‘STARBUCKS REFRESHA’. The ‘REFRESH’ marks are integrated in the contested mark. The element ‘STARBUCKS’ lacks any distinctive character because it is only the name of the titular of the contested mark. The element ‘REFRESHA’ is the most distinctive and dominant element of the contested mark. The elements ‘REFRESH’ and ‘REFRESHA’ are identical but for the letter ‘A’. The applicant is a Greek diary industry based in Athens since 1934. It produces fruit juices since 1992 with the brand name ‘REFRESH’. The word ‘REFRESH’ carries a relatively high level of distinctive character for the relevant goods and the distinctiveness is enhanced by the extensive use made of the ‘REFRESH’ mark by the applicant in the EU over many years. The evidence brought before the Office includes a survey made by a research company, GFK Hellas, in 2009 and shows that the ‘REFRESH’ mark has established a reputation in Greece. The evidence shows that clearly the mark is in use and that the mark ‘REFRESH’ is well-known to 77 % of the consumers.

In support of its observations, the applicant filed the following evidence:

• An excerpt from the Greek Patent Office concerning the earlier Greek trade mark ‘REFRESH’ No 111 084, with a certified translation in English.

• Annex 1: An excerpt from the TMView concerning the earlier Greek trade mark ‘REFRESH’ (figurative) No 181 614, with a limited translation.

• Annex 2: A print-out from Wikipedia showing the long history of the applicants company, including the history of the trade mark ‘REFRESH’.

• Annex 3: Research results from June 2009, made by the company GFK Hellas, as to whether the trade mark ‘REFRESH’ has established a reputation in Greece.

• Annex 4a), b) and c): Advertisements in a magazine (Yachting) from March 2010 and May 2010.

• Annex 5: A print-out of an article in an online magazine (marketingweek.gr) providing information about the advertising expenses for the year 2008.

• Annex 6: A print-out of an article in a Greek newspaper (‘The Daily’) from May 2007, providing information about non-alcoholic beverages in Greece including the juice ‘REFRESH’, which is said to have entered the market of juices in 1991 and now being one of the main players on the market.

• Annex 7: A print-out from a blog (foodandbeverage.gr), referring to an article of April 2010 (Source: Special Reports by Self Service), and providing information of the top 5 brands of juices 2009.

• Annex 8: A print-out from a website (selfservice.gr) of April 2010, providing information about the applicant´s juices ‘REFRESH’.

• Annex 9: A print-out from a website (marketingweek.gr) of October 2013, providing information about the new packaging of the ‘REFRESH’ juices.

• Annex 10: A print-out from a website (dietup.gr) of October 2013, providing information about the new packaging of the ‘REFRESH’ juices.

In its first submissions, the EUTM proprietor requested the applicant furnish proof that its earlier trade marks, invoked above, have been put to genuine use.

It its final submissions, the EUTM proprietor disputes the claims of the applicant and submits that:

a) the applicant’s earlier mark, No 181 614 ‘REFRESH’ (fig.), is not properly substantiated; therefore this earlier mark must be disregarded and cannot serve as a basis for invalidation of the EUTM proprietor’s mark,

b) genuine use of the two remaining earlier marks has not been proven,

c) Art. 8(5) EUTMR is not invoked and no reputation proven,

d) in any event, there is no likelihood of confusion.

The EUTM proprietor also claims that the evidence of use presented by the applicant is unclear, incomplete and insufficient to prove the use of the two remaining earlier marks and should therefore also be refused as unsubstantiated and the invalidity action rejected as unfounded. As regards the arguments on alleged reputation together with the submitted survey, the applicant did not even invoke Article 53(1)(a) EUTMR in conjunction with Article 8(5) EUTMR in the application for a declaration of invalidity. The applicant has not argued that the earlier marks enjoy an enhanced distinctive character and the survey is insufficient and inappropriate as valid and reliable evidence. Consequently, no such reputation has been established in any event and the enhanced distinctive character has not been argued for and not submitted any evidence in this respect. Therefore the earlier marks must be considered to be of an extremely weak distinctive character, if any, as the word REFRESH is fully descriptive for the goods at hand, even in Greece. The descriptive character of the word ‘refresh’ has been confirmed by the Office in numerous cases, also for fruit juices.

The EUTM proprietor also attached a copy of the notification to WIPO of a provisional refusal of protection from the Greek trade mark authority in July 2014, in relation to an IR designating Greece for the mark ‘REFRESH N’SHINE’, on the basis that the term was devoid of any distinctive character and was not capable of distinguishing the goods from goods by other traders in the market. In addition, the Greek IPO also stated that ‘REFRESH N’SHINE’, which is an English term, had become customary in current language in Greece. When a mark is largely descriptive, small differences should suffice to avoid confusion. Apart from the fact that the EUTM registration also begins with the highly distinctive mark ‘STARBUCKS’, already the additional ‘A’ in the word ‘REFRESHA’ alone is sufficient to exclude any likelihood of confusion on the part of the relevant public in relation to the goods at hand.

In support of its observations, the EUTM proprietor filed the following evidence:

• Enclosure 1: A printout from Collins English Dictionary; definition of the word ‘refresh’.

• Enclosure 2: A copy of the final refusal issued by the Office against EUTM application No 4 714 077, ‘REFRESH’ for, inter alia, fruit juices in Class 32.

• Enclosure 3: A copy of the notification to WIPO of a provisional refusal of protection based on absolute grounds for refusal issued by the Greek trade mark authority in relation to an IR designating Greece for ‘REFRESH N´SHINE’.

• Enclosure 4: Some extracts from Starbuck´s Facebook page from the relevant dates, printouts from third party websites commenting on the ‘STARBUCK´S REFRESHA’ products and a poster used in connection with the promotion and sale of its ‘STARBUCKS REFRESHA’ beverages in Greece, all to show that the use already made by the EUTM proprietor mark, also in Greece, during the summers 2013 and 2014 has not given rise to any confusion among the consumers.

SUBSTANTIATION

According to Rule 37(b)(ii) EUTMIR, an application for a declaration of invalidity pursuant to Article 56 EUTMR shall contain, as regards the grounds on which the application is based, in the case of an application pursuant to Article 53(1) EUTMR, particulars of the right on which the application for a declaration of invalidity is based and if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity.

According to Rule 39(3) EUTMIR, if the Office finds that the application does not comply with Rule 37, it shall invite the applicant to remedy the deficiencies found within such period as it may specify. If the deficiencies are not remedied before expiry of the time limit, the Office shall reject the application as inadmissible.

Nevertheless, an important distinction should be drawn between admissibility and substantiation requirements. Even though in invalidity proceedings based on relative grounds there is no time limit for the substantiation of earlier rights, and the proof of the existence, validity and scope of protection of all the earlier rights and the evidence proving the applicant´s entitlement to them have to be submitted together with the application, this does not mean that there is no distinction between admissibility and substantiation requirements. If, for instance, an applicant clearly identifies the earlier mark(s) on which the application is based (Rule 37(b)(ii) EUTMIR) and indicates the evidence in support of those grounds (Rule 37(b)(iv) EUTMIR), the application will be admissible. If the evidence submitted is later found to be insufficient to substantiate the earlier right (e.g. the certificate is not from an official source or not translated into the language of the proceedings), the application will be rejected as unfounded (see, by analogy, Rule 20(1) EUTMIR), and not as inadmissible (decision of 12/07/2013, R 1306/2012-4, URB EUROPE, § 21; decision of 12/07/2013, R 1310/2012-4, URB Bearings, § 21; and decision of 12/07/2013, R 1309/2012-4, URB, § 20).

According to Article 76(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

According to Rule 38(2) EUTMIR, where the evidence in support of the application is not filed in the language of the revocation or invalidity proceedings, the applicant must file, on its own motion, a translation into that language within two months of the filing date of the evidence in support of the application. This applies to all the evidence submitted by the applicant in the course of the proceedings, whether it is filed together with the application or at a later stage.

Thus, it is up to the applicant to submit the translation of the evidence in support of the application on its own motion.

If the applicant does not file a translation of evidence in support of the application which is required to evaluate the admissibility of the case (e.g. the particulars of the earlier right on which the application is based, or the indication of the facts, evidence and arguments in support of the grounds are not translated), the Office will invite the applicant to remedy the deficiency pursuant to Rule 39(3) EUTMIR (decision of 02/03/2007, R 300/2006-4, ACTILON/AC TELION).

However, if the applicant does not submit translations of the other evidence, which would not affect the admissibility of the case, any document in support of the application that is not translated by the applicant into the language of the proceedings within the time limit specified in Rule 38(2) EUTMIR will be deemed not to have been received by the Office and, therefore, will not be taken into account (Rule 98(2) EUTMIR) (decision of 05/03/2012, R 0826/2010-4, MANUFACTURE PRIM 1949 (fig. mark), § 25).

In order to prove the existence and validity of one of the earlier national trade marks on which the application is based, namely Greek trade mark No 181 614, the applicant submitted, on 13/10/2014, an excerpt from the TMview database, partly in Greek. However, the applicant did not submit a full translation of all the relevant data in that document. For example, the owner of the trade mark is not translated into the languages of the proceedings, namely English; neither does the document contain the registration date of the trade mark.

The excerpt from the TMview is a piece of ‘other evidence’, namely evidence that does not affect the admissibility of the case. Since the applicant did not submit a sufficient English translation of the extract on its own motion, and an indication of the registration date of this earlier mark, it cannot be taken into account.

Moreover, the expiry date of this earlier mark was on the 18/10/2015. The applicant did not submit a renewal certificate before the adversarial part ended at 02/10/2015.

The applicant, therefore, failed to prove the existence and validity of the earlier Greek mark No 181 614.

Consequently, the Cancellation Division will take into account as basis of the invalidity application only the earlier EUTM No 5 764 261 and Greek trade mark No 111 084.

PROOF OF USE

According to Article 57(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must submit proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been genuinely used in the territories in which it is protected and for the goods or services for which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested EUTM application was published, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions contained in Article 42(2) EUTMR were satisfied at that date.

According to the same provision, in the absence of such proof the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested that the applicant submit proof of use of the trade marks on which the application is based, namely EUTM registration No 5 764 261, Greek trade mark No 111 084 and Greek trade mark No 181 614. Since the earlier Greek trade mark No 181 614 is found unsubstantiated, left for proof of use are the applicant´s earlier European Union trade mark No 5 764 261 and Greek trade mark No 111 084.

The request was filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity. The earlier EUTM was registered on 30/04/2008 and the Greek trade mark No 111 084 on 19/12/1994.

On 20/11/2014, the applicant was given three months to submit proof of use.

The application for a declaration of invalidity was filed on 23/07/2014. The contested EUTM application was published on 09/01/2013. The applicant was, therefore, required to prove that the European Union trade mark on which the application is based was genuinely used in the European Union from 23/07/2009 to 22/07/2014 inclusive, and that the Greek trade mark No 111 084 was genuinely used in Greece from 23/07/2009 to 22/07/2014 inclusive, as well as from 09/01/2008 to 08/01/2013 inclusive. These periods overlap to a certain extent.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

EUTM registration No 5 764 261

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

Greek registration No 111 084, ‘REFRESH’

Class 32: Juices, soft drinks, non-alcoholic beverages.

According to Rule 40(6) in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 24/02/2015, the applicant submitted proof of use. The evidence consists of, inter alia, the following documents (some of them already previously submitted):

• Item 1: Three advertisings from a magazine (Yachting), 2010.

• Item 2: A print-out from a blog (foodandbeverage.gr), referring to an article of April 2010 (Source: Special Reports by Self Service), and providing information of the top 5 brands of juices 2009, including the brand ‘REFRESH’, ranked as No 5.

• Item 3: A print-out from a website (selfservice.gr) of April 2010, providing information about the applicant´s juices ‘REFRESH’, with 100% Greek Oranges.

• Item 4: A print-out from a website (marketingweek.gr) of October 2013, providing information about the new packaging of the ‘REFRESH’ juices.

• Item 5: A print-out from a website (dietup.gr) of October 2013, providing information about the new packaging of juices ‘REFRESH’.

• Item 6: Ten invoices, addressed to the same client in Greece 2010-2014, not fully translated, where several posts are quoted as the word ‘REFRESH´ or the letters ‘REF’, but it is not clear what the products are.

• Item 7: Three price lists, concerning the years 2010-2012, not fully translated and without prices. The mark ‘REFRESH’ appears on the top of the list:

• Item 8: Print-outs, undated, showing some packaging models of the products ‘Juices REFRESH’, for example this:

• Item 9: Photos, undated, of five packaging models of the products ‘Juices REFRESH’, for example this:

In addition, on 13/10/2014, to substantiate its claim of reputation in Greece as regards fruit drinks and fruit juices covered by the marks on which the application for invalidity is based, the applicant, in its application marked as Annexes, submitted the following evidence which will also be taken into account as proof of use:

• Annex 2: A print-out from Wikipedia showing the long history of the applicants company including the history of the trade mark ‘REFRESH’.

• Annex 3: Research results from June 2009, made by the company GFK Hellas, as to whether the trade mark ‘REFRESH’ has established a reputation in Greece.

• Annex 5: A print-out of an article in online magazine (marketingweek.gr) providing information about the advertising expenses for the year 2008. The advertised product ‘REFRESH POWER GENIUS juice’ has an advertising expenditure of €123.015,62, the ‘REFRESH POWER juices’ an advertising expenditure of €30.919,86 and the ‘REFRESH-EVGA TEA’ an advertising expenditure of €80.930,64.

• Annex 6: A print-out of an article in a Greek newspaper (‘The Daily’) from May 2007, providing information about non-alcoholic beverages in Greece, including the juice ‘REFRESH’, which is said to have entered the market of juices in 1991 and now being one of the main players on the market.

Preliminary remark

The EUTM proprietor argues that the applicant did not submit translations of some of the evidence and/or that it is of poor quality and that, therefore, the evidence should not be taken into consideration. However, the applicant is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR, applicable by analogy to the cancellation proceedings). Taking into account the nature of the documents which have not been fully translated and are considered relevant for the present proceedings, namely the invoices, the price lists and the packaging, and their self-explanatory character, the Cancellation Division considers that there is no need to request a translation.

The EUTM proprietor further argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the earlier marks are registered. The EUTM proprietor’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some terms of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The evidence shows that the place of use is Greece. This can be inferred from the language of the documents, Greek, the currency mentioned (Euro) and some addressees and webpages in Greece. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period. Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, or vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, taken as a whole, especially the articles, stating, inter alia, that the ‘REFRESH’ juices are one of the major brands in the Greek market and what the marketing expenses are, plus the invoices, provides the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence submitted by the applicant in order to prove genuine use of the earlier EUTM relates exclusively to Greece. However, as stated above, the territorial scope of the use is only one of the several factors to be assessed in the determination of whether the use is genuine or not.

The Cancellation Division consider that the applicant has provided sufficient indications concerning extent of use of the earlier EUTM No 5 764 261 and the earlier Greek trade mark No 111 084.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the evidence of use submitted by the applicant contains sufficient indications concerning the nature of use of the earlier marks.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in form differing in elements which do not alter the distinctive character of the mark in the form in which it is registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the registered EUTM No 5 764 261, has been used as registered on juice packages, price lists and advertisements, even though sometimes the ‘EVGA’ element is placed above the ‘REFRESH’-letters. This figurative element (the ‘EVGA’ element) is an element in the mark which does not significantly dominate the verbal element of the mark. Therefore, the documents presented as proof of use of the earlier mark as the figurative mark with the ‘EVGA’-element placed above the letters ´REFRESH´ can be accepted as use of the mark according to Article 15(2)(a) EUTMR, as the placement of this figurative element do not affect the distinctive character of the mark, which is dominated by the element ‘REFRESH’.

The earlier Greek word mark registration No 111 084, ‘REFRESH’, has been used in, inter alia, article texts and invoices.

In view of the above, the Cancellation Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Use for the relevant goods

The earlier Community trade mark No 5 764 261 is registered for

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

The earlier Greek trade mark No 111 084 is registered for

Class 32: juices, soft drinks, non-alcoholic beverages.

However, the evidence does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 57(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

...if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all the protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.’

(14/07/2005, T-126/03, Aladin, EU:T:2005:288)

In the case of the European Union trade mark registration No 5 764 261, the evidence shows genuine use of the trade mark for some of the goods for which the mark is registered, namely:

Class 32: fruit drinks and fruit juices.

In the case of Greek trade mark registration No 111 084, the evidence proves use for goods that are not expressly mentioned in its list of goods, namely fruit drinks and fruit juices. These goods can be considered to form objective subcategories of juices and soft drinks, namely fruit juices and fruit drinks. Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for the following goods:

Class 32: fruit juices, fruit drinks.

Therefore, the Cancellation Division will only consider the abovementioned goods in its further examination of the application.

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 application is based on more than one earlier trade mark. For reasons of procedural economy, the Cancellation Division will first examine the application in relation to earlier Greek trade mark No 111 084.

a) The goods

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods and 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.

The goods on which the application is based and for which the use have been proved are the following:

Greek trade mark registration No 111 084

Class 32: fruit juices, fruit drinks.

The contested goods are the following:

Class 30: Coffee, cocoa and espresso beverages, and beverages made with a base of coffee, cocoa and/or espresso; flavoring syrups to add to beverages; ready-to-drink coffee; tea and herbal tea (non-medicinal); tea and herbal tea-based beverages (non-medicinal); tea and herbal tea-based beverages and concentrates (non-medicinal), with fruit flavoring; ready-to-drink tea; herbal tea and/or fruit flavoring (other than essential oils).

Class 32: Fruit drinks and soft drinks containing fruit juices (non-alcoholic); fruit juices, sparkling fruit and juice-based beverages and soda beverages (non-alcoholic); liquid and powdered beverage mixes (non-alcoholic); flavoring syrups for making tea and herbal tea-based beverages (non-medicinal and non-alcoholic).

Contested goods in Class 30

The contested coffee, cocoa and expresso beverages, and beverages made with a base of coffee, cocoa and/or espresso; ready-to-drink coffee; tea and herbal tea (non-medicinal); tea and herbal tea-based beverages (non-medicinal); tea and herbal tea-based beverages and concentrates (non-medicinal), with fruit flavoring; ready-to-drink tea; herbal tea and/or fruit flavoring (other than essential oils) are considered similar to the applicant’s fruit juices, fruit drinks. These goods can coincide in producer, relevant consumer and distribution channels. Furthermore, they are in competition.

The contested flavoring syrups to add to beverages are similar to a high degree to the applicant´s fruit juices, fruit drinks. They can coincide in purpose, producer, relevant consumer and distribution channels. Furthermore, they are in competition.

Contested goods in Class 32

The contested soft drinks containing fruit juices (non-alcoholic) include, as a broader category, the applicant´s fruit juices. It is impossible for the Cancellation Division to filter these goods from the abovementioned category. Since the Cancellation Division cannot dissect ex officio the broad category of the EUTM proprietor’s goods, they are considered identical.

The contested fruit drinks, fruit juices, sparkling fruit and juice-based beverages (non-alcoholic) are identical to the applicant´s fruit juices, fruit drinks.

The contested soda beverages (non-alcoholic) are similar to the applicant’s fruit juices, fruit drinks. This is because they coincide in purpose, producer, distribution channels, relevant public and are in competition.

The contested liquid and powdered beverage mixes (non-alcoholic); flavoring syrups for making tea and herbal tea-based beverages (non-medicinal and non-alcoholic) are similar to the applicant’s fruit drinks, fruit juices. This is because they may coincide in purpose, producer, distribution channels, relevant public and are in competition.

b) The signs

REFRESH	STARBUCKS REFRESHA
Earlier trade mark	Contested trade mark

The relevant territory is Greece.

The earlier mark is a word mark consisting of the word ‘REFRESH’. The contested sign is a word mark consisting of the words ‘STARBUCKS REFRESHA’.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘R-E-F-R-E-S-H’. On the other hand, they differ in the last letter ‘A’ and the additional word ‘STARBUCKS’ in the contested mark.

Aurally, the pronunciation of the marks coincides in the sound of the letters ‘’R-E-F-R-E-S-H’, present identically in the opposing mark, and to that extent the marks are aurally similar. The signs differ in the sound of the element ‘STARBUCKS’ and the sound of the letter ‘A’ at the end of the element ‘REFRESHA’ in the contested sign.

Conceptually, the words ‘REFRESH’ and ‘REFRESHA’ do not have any meaning for the public in the relevant territory. Neither does the word STARBUCKS have any meaning in the relevant territory.

Since neither of the signs has a meaning for the public in the relevant territory, the conceptual comparison does not influence the assessment of similarity between the signs.

c) Distinctive and dominant element of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks have no element which could be considered more distinctive and dominant (visually eye-catching) than other elements.

d) Distinctiveness of the earlier sign

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 has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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 to various degrees are directed at the public at large. The degree of attention is considered to be average.

f) Global assessment, other arguments and conclusion

The contested goods have been found to be partly identical and partly similar, to various degrees, to the applicant’s goods.

The global appreciation of the likelihood of confusion, in relation to 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.

The signs are visually and aurally similar insofar as they share the same letters ‘R-E-F-R-E-S-H’.

The signs differ in the last letter ‘A’ and the word ‘STARBUCKS’ in the contested sign, which has no counterpart in the earlier sign.

The opposing signs share seven letters out of eight in the same order. This means that the earlier trade mark is entirely included within the contested sign. ‘STARBUCKS’ is a widely known commercial name. It is improbable that the word ‘REFRESHA’ in the contested mark will go unnoticed. According to settled case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more aspects (see 02/11/2003, T286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T112/03, Flexi Air, EU:T:2005:102; 06/10/2004, T356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T104/01, Fifties, EU:T:2002:262; and 04/05/2005, T22/04, Westlife, EU:T:2005:160), and this common element retains an independent role in another composite mark (06/10/2005, C120/04, Thomson Life, EU:C:2005:594, § 30). The overall impression produced by this composite sign might therefore lead the public to believe that the goods at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

In the present case, the element ‘REFRESH’ in the contested mark - even though it also consists of an ending letter ‘A’ - is distinguishable and plays an independent role in it, since both word elements of the sign are meaningless for the relevant public and, therefore, the two words composing the contested mark will be perceived as two independent distinctive elements.

Consequently, the signs are visually and aurally similar to an average degree. The goods are partly identical and partly similar to various degrees and target the public at large, whose degree of attention is average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant goods.

The words ‘REFRESH’ and ‘REFRESHA’ will not be associated with any meaning related to the goods at issue by the relevant Greek consumers and will be perceived as distinctive words.

Considering all the above, the Cancellation Division finds that the differences between the signs are not capable of counteracting the similarity resulting from their coinciding element, ‘REFRESH’, regardless of the ending letter ‘A’ in the contested mark, and that, for identical or similar goods, there is a likelihood of confusion with the earlier Greek trade mark, including a likelihood of association, on the part of the public.

Therefore, it follows that the cancellation application is well founded on the basis of the earlier Greek trade mark No 111 084. It follows that the contested trade mark must be cancelled for all the contested goods.

The EUTM proprietor refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T 292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous case referred to by the EUTM proprietor (116911/45814 GR) is not relevant to the present proceedings. The Cancellation Division assesses the knowledge of English in the Greek territory differently (see above under b)).

The EUTM proprietor also refers to previous decisions of the Office to support its arguments. 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 the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

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

The previous decision by the Office, referred to by the EUTM proprietor (application No 004714077), is not relevant to the present proceedings. A European Union trade mark application is assessed for the whole EU market, and many in the EU are English-speaking. In the present case, comparison of the signs is made on the Greek-speaking part of the relevant public.

In its observations, the EUTM proprietor further argues that its registration with the word ‘REFRESHA’ in the ‘STARBUCKS REFRESHA’ mark already coexists with the applicant’s earlier marks in Greece. This claim is supported by some extracts from Starbuck´s Facebook page from the relevant dates, printouts from third party websites commenting on the ‘STARBUCK´S REFRESHA’ products and a poster used in connection with the promotion and sale of its ‘STARBUCKS REFRESHA’ beverages in Greece, all to show that the use already made by the EUTM proprietor mark, also in Greece, during the summers 2013 and 2014 has not given rise to any confusion among the consumers (Enclosure 4).

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Cancellation Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds of refusal, the proprietor of the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T 31/03, Grupo Sada, EU:T:2005:169, § 86).

Formal co-existence of certain marks in national or European Union registries is not per se particularly relevant. It also needs to be proven that the marks coexist in the market, which could indicate that consumers are used to seeing the marks without confusing them. Last but not least, the Office will in principle be restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Cancellation Division consider evidence of the coexistence of other marks in the market (and possibly in a Register) on a national/European Union level as an indication of ‘dilution’ of the distinctive character of the applicant’s mark which might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, for example, different legal or factual situations in the past or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the EUTM proprietor must be rejected as unfounded.

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 earlier mark due to its extensive use and reputation, as claimed by the applicant. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘REFRESH’ 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 right, the EUTM No 5 764 261, invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, EU:T:2004:268).

Also, since the cancellation application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the cancellation, namely Article 8(5) EUTMR in conjunction with Article 53(1)(a) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(iii) 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

Victoria DAFAUCE MENÉNDEZ

Lena FRANKENBERG GLANTZ

Dorothée SCHLIEPHAKE

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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 Cancellation 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.