OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)


Opposition Division



OPPOSITION No B 2 272 444


Starbucks Corporation doing business as Starbucks Coffee Company, 2401 Utah Avenue South, Seattle, Washington 98134, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)


a g a i n s t


Actina Fzco, P.O. Box 16764, Jebel Ali Free Zone, Dubai, United Arab Emirates (applicant), represented by Cabinet Gasquet, 24C, Les Pléiades Park Nord-Annecy, 74370 Metz‑Tessy, France (professional representative).


On 23/12/2015, the Opposition Division takes the following



DECISION:


1. Opposition decision No B 2 272 444 notified to the parties on 23/07/2015 is hereby revoked.


2. Opposition No B 2 272 444 is upheld for all the contested goods.


3. Community trade mark application No 11 928 108 is rejected in its entirety.


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


REASONS:


The opponent filed an opposition against all the goods of Community trade mark application No 11 928 108. The opposition is based on, inter alia, Community trade mark registration No 9 351 123. In relation to this earlier right the opponent invoked Articles 8(1)(b) and 8(5) CTMR. In relation to other earlier rights the opponent invoked Articles 8(1)(b), 8(4) and 8(5) CTMR



DECISION ON THE REVOCATION – Article 80 CTMR


Where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.


On 29/07/2015, the Office informed the parties in the present proceedings that it had the intention to revoke the decision of 23/07/2015 taken in the opposition proceedings number B 2 272 444.


The reason was that the proceedings that led to this decision contained an obvious procedural error attributable to the Office, namely that it overlooked the request for confidential treatment of information present in the documents submitted to the Office.

In accordance with Article 80 CTMR, the Office gave the parties two months to submit observations. On 04/08/2015 the opponent agreed to the revocation of the aforementioned decision. The applicant did not submit any observations.


Therefore, the decision adopted by the Opposition Division on 23/07/2015 in the opposition No B 2 272 444 is herewith revoked and is replaced by the present decision.



LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR


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. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Community trade mark registration No 9 351 123.



  1. The goods


The goods on which the opposition is based are, among others, the following:


Class 29 Milk, flavored milk, milkshakes and milk-based beverages, milk-based food beverages (except milkshakes), non-carbonated milk-based soft drinks, milk-based energy drinks, powdered beverage mixes used to make milk-based beverages.


Class 32 Water, mineral water, sparkling water, and other non-alcoholic drinks, soft drinks, energy drinks, fruit drinks and fruit juices, fruit drinks and soft drinks containing fruit juices, liquid and powdered beverage mixes; preparations for making beverages; flavoring syrups for making beverages; flavored and unflavored bottled waters, sparkling waters, mineral waters, fruit juices, sparkling fruit and juice based beverages and soda pop beverages; frozen fruit beverages and frozen fruit-based beverages.


The contested goods are the following:


Class 29 Milk; yoghurt; fermented milk; milk beverages (fermented milk predominating); milk beverages (milk predominating); processed dairy products; lactic acid bacteria drinks; lactobacillus drink.


Class 32 Mineral and aerated waters; non-alcoholic beverages; fruit-flavored beverages; fruit juices; syrups for beverages; fruit extracts (for beverages), preparations for making effervescent 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 29


The contested milk is identically contained in the opponent´s list of goods.


Fermented milk is included in the opponent´s milk as a broader category and is therefore considered identical.


Milk beverages (fermented milk predominating); milk beverages (milk predominating); lactic acid bacteria drinks; lactobacillus drink are included in the opponents milk-based beverages as a broader category and are therefore considered identical.


Processed dairy products include, as a broader category, the opponent´s flavored milk, milkshakes and milk-based beverages, milk-based food beverages (except milkshakes), non-carbonated milk-based soft drinks, milk-based energy drinks. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.


Yoghurt is similar to the opponent´s milk as they have the same nature. Furthermore they can coincide in producer, end user and distribution channels.


Contested goods in Class 32


The contested mineral waters; fruit juices are identically contained in the opponent´s list of goods.


Aerated waters are included in the opponent´s water as a broader category and are therefore considered identical.


Non-alcoholic beverages include, as a broader category, the opponent´s water. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.


Fruit-flavored beverages are included in the opponent´s other non-alcoholic drinks (other than water, mineral water, sparkling water) as a broader category and are therefore considered identical.


Syrups for beverages include, as a broader category, the opponent´s flavoring syrups for making beverages. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.


Fruit extracts (for beverages), preparations for making effervescent beverages are included in the opponent´s preparations for making beverages as a broader category and are therefore considered identical.



  1. The signs




STARBUCKS VIA





Earlier trade mark


Contested sign


The relevant territory is the European Union. The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C 514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.


The earlier mark is a word mark consisting of two verbal elements, ‘STARBUCKS’ and ‘VIA’.


The contested mark is a figurative mark consisting of the verbal element ‘ovia’ in differently stylised lower-case letters or, as the case may be, of an abstract circular element reminiscent of the letter ‘o’ and the verbal element/word ‘via’. The letter ‘o’ contains several concentric circles and an element reminiscent of the leaves on the top of an apple or even of a small stylised crown. The other letters are written in a fairly standard typeface.


Since at least one of the marks involved is a word mark, it must be mentioned that, in the case of word marks, it is the word(s) as such that is/are protected, not its/their written form. Therefore, it is irrelevant whether the word mark is represented in lower or upper case letters.


Visually, the signs are similar to the extent that they coincide in the letter sequence ‘V-I-A’, which constitutes the second word of the earlier mark and three out of four letters of the contested sign (or the entire verbal part of the contested sign if the first element is not perceived as a letter ‘O’ but as a figurative element only reminiscent of that letter). However, they differ in the word ‘STARBUCKS’ of the earlier mark and in the stylised first letter, ‘O’, or element reminiscent of this letter, and in the slightly stylised other letters of the contested sign. None of these elements has a counterpart in the opposite sign.


Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the syllables ‛VI-A’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the word ‛STARBUCKS’ of the earlier mark and the sound of the letter ‘O’ — if perceived as such — at the beginning of the contested sign. Neither of these has any counterpart in the opposite sign.


Conceptually, neither of the signs as a whole has a meaning for the public in the relevant territory. However, if the letter ‘O’ in the contested sign is perceived as an abstract element followed by the word ‘via’, the latter word will be associated by some of the more educated public with the Latin word ‘via’, meaning ‘a main road or highway, especially in ancient Rome.’ (information extracted from Wiktionary on 21/12/2015 at https://en.wiktionary.org) or with a preposition meaning ‘by way of; by means of; through’ (http://www.collinsdictionary.com/). The signs are conceptually similar to the extent that they both contain the word ‘via’, which will be associated by a part of the public with the aforementioned meanings.


The contested sign could also be perceived as ‘ovia’ by some of the relevant public despite the stylisation of the first letter of the word. Since the word ‘ovia’ has no meaning, one of the signs has no meaning associated to it; therefore, the signs are not conceptually similar as far as this part of the relevant public is concerned.


Taking into account the abovementioned visual, aural and, for part of the relevant public, also conceptual coincidences, it is considered that the signs under comparison are similar.



  1. Distinctive and dominant elements 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 under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.



  1. 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’). The assessment of likelihood of confusion will proceed on the inherent distinctiveness of the earlier mark.


As the earlier mark does not have any meaning in relation to the goods in question it is considered to be of normal inherent distinctiveness.



  1. Relevant public – level 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 level 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. Given that the goods in question are generally rather inexpensive, frequently purchased and meant for daily consumption the level of attention of the relevant public will be below average.



  1. Global assessment, other arguments and conclusion


The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22).


The goods have been found to be partly identical and partly similar and they target the public at large, whose level of attention is below average. The inherent distinctiveness of the earlier mark is normal.


The signs coincide in the letter sequence ‘V-I-A’, which constitutes the second word of the earlier mark and forms a major part of the contested sign, and to that extent the signs are visually and aurally similar. For the part of the public perceiving the contested sign as a combination of a figurative element followed by the word ‘via’, as set out above under section b) of this decision, the signs are also conceptually similar.


The Office points out that, where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. This is justified by the fact that consumers will more easily remember and refer to the goods and services in question by their name, rather than describe the figurative elements of the trade mark in question. In the present case, at least some of the relevant public will perceive the first element of the contested sign as a figurative abstract element, reminiscent of the letter ‘O’ but not actually being that letter, and will refer to the contested sign as the ‘via’ mark.


Although the verbal element of the earlier mark, ‘STARBUCKS’, will have an impact on consumers’ perception, this does not alter the fact that the element ‘VIA’ has an independent distinctive character in the earlier right. Therefore, while the element ‘STARBUCKS’ does have some impact, it does not introduce a conceptual difference between the signs for any of the relevant public, and the phrase ‘STARBUCKS VIA’ has no meaning per se. Therefore, the element ‘STARBUCKS’ does not imbue the earlier mark with such a significantly different concept as to rule out a likelihood of confusion.


Furthermore, having regard to the principle of interdependence, according to which a higher degree of similarity between the goods counteracts a lower degree of similarity between the conflicting signs and vice versa, it is reasonable to find that this also applies to the present case, where the goods are almost entirely identical (just Yoghurt being similar) and the signs are similar. Taking also into account the nature of the goods meant for daily consumption and the level of attention of the relevant public, which is likely to be below average as set out under section e) of this decision, it cannot be safely excluded that the relevant consumers will confuse the marks and believe that the goods in question come from the same undertaking or, as the case may be, economically linked undertakings.


In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that there is a likelihood of confusion in the English-speaking parts of the relevant territory within the meaning of Article 8(1)(b) CTMR and upholds the opposition. 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 extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.


As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.


As earlier Community trade mark No 9 351 123 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 (judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).


Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(4) and 8(5) CTMR.



COSTS


According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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


Ric WASLEY

Tobias KLEE

Gailé SAKALAITÉ







According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.



Latest News

  • FEDERAL CIRCUIT AFFIRMS TTAB DECISION ON REFUSAL
    May 28, 2021

    For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).

  • THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
    May 27, 2021

    Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.

  • UNO & UNA | DECISION 2661950
    May 22, 2021

    Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)