OPPOSITION No B 2 504 994

Grupo Omnilife, S.A. de C.V., Av. Inglaterra Num. 3089 Interior T. Col. Vallarta Poniente, Guadalajara (Jalisco) 44500, Mexico (opponent), represented by
Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

Jan Kozioł, ul. Pelikanów 8, 02-843 Warszawa, Poland (applicant), represented by Paweł Kurcman, Leszno 8 Lok. 10, 01-192 Warsaw, Poland (professional representative)

On 10/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 504 994 is partially upheld, namely for the following contested goods and services:

Class 32: Non-alcoholic beverages; preparations for making beverages; carbonated non-alcoholic drinks; low-calorie soft drinks; sports drinks; energy drinks; energy drinks [not for medical purposes]; energy drinks containing caffeine; isotonic beverages; beverages containing vitamins; guarana drinks; waters [beverages]; flavoured waters; isotonic beverages [not for medical purposes].

Class 35: Wholesale services in relation to non-alcoholic beverages; retail services in relation to non-alcoholic beverages.

2. European Union trade mark application No 13 636 204 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 636 204 . The opposition is based on the following earlier rights:

• European Union trade mark registration No 8 512 774 ‘EGO’ (word mark)

• European Union trade mark registration No 9 073 354

The opponent invoked Article 8(1)(b) EUTMR, in relation to both earlier rights.

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 8 512 774 ‘EGO’ (word mark).

1. The goods and services

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

Class 5: Food supplements and vitamin preparations.

Class 30: Coffee, tea; artificial coffee; coffee-based beverages; tea based beverages; cocoa-based beverages; beverages based on chocolate; infusions, not medicinal; flour and preparations made from cereals, rice, bread, biscuits, pastry and confectionery; biscuits; chewing gum, not for medical purposes.

Class 32: Beers, mineral and aerated water and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; sodas; sodas; whey drinks; isotonic beverages.

The contested goods and services are the following:

Class 32: Non-alcoholic beverages; preparations for making beverages; carbonated non-alcoholic drinks; low-calorie soft drinks; sports drinks; energy drinks; energy drinks [not for medical purposes]; energy drinks containing caffeine; isotonic beverages; beverages containing vitamins; guarana drinks; waters [beverages]; flavoured waters; isotonic beverages [not for medical purposes].

Class 35: Commercial trading and consumer information services; advertising, marketing and promotional services; distribution of advertising, marketing and promotional material; trade show and exhibition services; provision of information relating to marketing; market campaigns; product sampling; production of advertising material; production of advertising matter and commercials; sales promotion; production of radio advertisements; production of cinema commercials; promotion, advertising and marketing of on-line websites; advertisement via mobile phone networks; advertising via electronic media and specifically the internet; advertising in the popular and professional press; advertising in periodicals, brochures and newspapers; advertising and marketing; banner advertising; advertising; publication of publicity materials; bill-posting; cinema advertising; online advertisements; radio advertising; radio and television advertising; television advertising; wholesale services in relation to non-alcoholic beverages; retail services in relation to non-alcoholic 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

The contested Non-alcoholic beverages cover the goods non-alcoholic drinks (- other than mineral and aerated water) of the opponent. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested preparations for making beverages; isotonic beverages; isotonic beverages [not for medical purposes], despite the slightly different formulation are identically contained in the opponent´s list of goods in Class 32.

The contested waters [beverages] cover, as a broader category, the opponent´s mineral and aerated water. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent´s goods.

The contested carbonated non-alcoholic drinks; low-calorie soft drinks; sports drinks; energy drinks; energy drinks [not for medical purposes]; energy drinks containing caffeine; beverages containing vitamins; guarana drinks; flavoured waters fall in the opponent´s broad category of other non-alcoholic drinks
(- other than mineral and aerated water) and are therefore identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to non-alcoholic beverages are similar to a low degree to the opponent’s mineral and aerated water and other non-alcoholic drinks in Class 32, since these goods of the opponent and the goods in relation to which the retail services are offered are identical, according to the comparison carried out above.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services. Therefore, the contested wholesale services in relation to non-alcoholic beverages are similar to a low degree to the opponent’s mineral and aerated water and other non-alcoholic drinks in Class 32, following the same reasoning above.

The contested advertising, marketing and promotional services; distribution of advertising, marketing and promotional material; trade show and exhibition services; provision of information relating to marketing; market campaigns; product sampling; production of advertising material; production of advertising matter and commercials; sales promotion; production of radio advertisements; production of cinema commercials; promotion, advertising and marketing of on-line websites; advertisement via mobile phone networks; advertising via electronic media and specifically the internet; advertising in the popular and professional press; advertising in periodicals, brochures and newspapers; advertising and marketing; banner advertising; advertising; publication of publicity materials; bill-posting; cinema advertising; online advertisements; radio advertising; radio and television advertising; television advertising fall under the broad category of advertising services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, these contested services are dissimilar to the goods of the opponent, even if these could be advertised due to the complete absence of any relevant points of contact.

The contested commercial trading and consumer information services are mainly business support services which consist of activities such as processing orders, advisory services relating to the purchase of goods and services, arranging commercial contracts and information, but do not include retail or similar services.These are dissimilar to the opponent´s goods. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers, and are not likely to come from the same kinds of undertakings.

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 and services found to be identical or similar to a low degree are directed at the public at large and, for the wholesale services in Class 35, at business customers with specific professional knowledge or expertise.

The degree of attention is deemed to be average.

3. The signs

EGO
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 opposition proceedings against any application for registration of a 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The words “original”, “energy drink” and “ego” exist as such in English. The Opposition Division therefore finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark consists in the word ‘EGO’, which is used in English to refer to self-esteem or self-importance. Since it has no meaning in relation to the relevant goods, it is distinctive to an average degree.

The words “ORIGINAL” and “ENERGY” in the contested mark have various concepts in English. The Opposition Division will herein focus only on the ones that are relevant for the analysis and comparison of signs.

The word “ORIGINAL” in the contested sign is used in English to indicate that something is genuine, new, fresh or inventive. The word “ENERGY” is used in English to refer to the capacity for vigorous activity. The word “DRINK” is an English synonym for “beverage”. The combination of terms “ENERGY DRINK” are understood as indicating that a certain beverage provides mental and physical stimulation.

The words “ORIGINAL” and “ENERGY DRINK” are descriptive of the characteristics of the goods in Class 32, and of the goods in relation to which the contested services in Class 35 (for which a low similarity has been found) are offered. Therefore, these terms are devoid of distinctive character.

The word “EGOO” does not exist as such in English. Therefore, part of the public will perceive it as a meaningless term. However, it cannot be totally disregarded that at least part of the public attributes it the same concept of the word “EGO”, referred to above, due to the similarities between them. In both scenarios, it is a distinctive element within the mark.

Regarding the rectangular background and the stylisation of letters of the verbal elements of the contested sign, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the black background of the contested sign is merely decorative and devoid of any distinctive character. The stylisation of the letters of the words in the contested sign, even though the initial letter ‘E’ is somewhat more unusual, is otherwise fairly standard and bears not much trademark significance either.

According to the above, for the English-speaking consumers, the most distinctive element in the contested mark is the word “EGOO”, independently of the fact that it is perceived as having the abovementioned concept of “ego” or not.

This mark is formed by the dominant (visually eye-catching) word “EGOO” and the words “ORIGINAL” and “ENERGY DRINK”, of significantly less visual impact, and a rectangular background with less impact than the verbal elements, for the reasons detailed above.

Visually, the signs coincide in “EGO”, which constitutes the entire earlier mark and three of the four letters of the element “EGOO” of the contested mark. This later word constitutes the most distinctive element in the contested sign and, at the same time, it is the dominant (visually eye-catching) element in it.

The signs differ in the stylisation and the double final letter “O” of the word “EGOO” of the contested mark. This difference is read in the last place (i.e. reading takes place from left to right), and therefore catches consumer´s attention in the last place, when perceiving the dominant and distinctive word “EGOO” visually. Neither would the stylisation of the letters catch the consumers’ attention for the reasons indicated above.

The signs also differ in the additional verbal elements “ORIGINAL” and “ENERGY DRINK” and in the black background of that same sign. These differing elements have been considered to be non-distinctive and as such their weighting in the degree of similarity is significantly reduced.

Bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, it must be concluded that the signs are visually similar to at least an average degree.

Aurally, regarding the pronunciation of “EGO” and “EGOO” by English-speaking consumers, for the part of the public for which “egoo” brings to mind the word “ego”, the same pronunciation is expected to be used when referring to both of them. For the part of the public perceiving “egoo” as an invented term, there is no pronunciation for the word already established. Therefore, in this later case, at least part of the public will pronounce “egoo” either as “ego” (with a normal ending “o”) or as having the same sound of “o” but longer. It is possible also that part of the public pronounces the “oo” similar to letter “u”. In all of these cases, as stated above, English consumers will pronounce “ego” and “egoo” identically or practically identically.

The signs differ in the pronunciation of the additional verbal elements of the contested sign, ‘original’ and ‘energy drink’. Bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, the impact of the latter elements is limited, and it must be concluded that the signs are aurally similar to an average degree.

However, it cannot be disregarded that at least part of the public refers to the contested mark as “EGOO”, omitting the pronunciation of the non-distinctive words “original” and “energy drink”, since these are not capable of helping consumers identify the commercial origin of the goods. In this scenario, the signs are aurally identical or practically identical considering what was said previously about the repetition of the last sound.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For at least part of the public, the signs are conceptually similar to an average degree, since they both convey the concept of ‘EGO’. The additional concepts present in the contested sign are not particularly relevant, since they concern elements that are non-distinctive in relation to the relevant goods and services (‘original’ and ‘energy drinks’).

For the part of the public that considers the element ‘EGOO’ of the contested sign meaningless, the signs are not conceptually similar.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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.

5. Global assessment, other arguments and conclusion

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).

The goods and services are partly identical, partly similar to a low degree and partly dissimilar. The distinctiveness of the earlier mark is normal and the degree of attention of the public is average.

The signs are visually similar to at least an average degree. Depending on consumer´s perception, the marks are aurally identical or practically identical or aurally similar to an average degree, and conceptually similar to an average degree, or not conceptually similar.

The similarities lie in the only element forming the earlier mark ‘EGO’, and in the distinctive element ‘EGOO’ of the contested sign, which is visually clearly perceptible as an independent and dominant element. All the remaining verbal elements of the contested sign are considered non-distinctive and less eye-catching.

Although the applicant argues that marks differ in their length, given the analysis of the distinctiveness and dominance of the elements of the contested mark it is the length of ‘EGO’ vs ‘EGOO’ (which dominates the overall impression) what is compared, and these not of very different length.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities and to safely distinguish between the signs, in particular taking into account the fact that the contested goods are identical. This also applies to the services similar to a low degree given the relevant similarities between the signs.

As regards the part of the public perceiving the signs as aurally similar to an average degree, and not as aurally identical or practically identical, 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). It is likely that in such noisy environments the aural differences referred to above are not clearly perceived, or are overheard, contributing to the confusion between the signs.

In addition, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, when encountering the marks at issue, the relevant consumer may perceive the contested sign as a brand variation of the earlier sign, used for a new line of goods and for the retail of these goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking parts of the public, and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

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 application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. Indeed, even considering the low degree of similarity of the contested services, the coincidences between the marks are enough to counteract such low degree of similarity, and sufficient to lead consumers to a risk of confusion.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 9 073 354 for the following goods:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking - powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

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

This other mark covers, besides the goods already covered by the earlier mark No 8 512 774, in relation to which the analysis and comparison have been carried out before, other goods that are obviously neither identical nor similar to the remaining contested services in Class 35, following the same reasoning above. Therefore, the outcome cannot be different with respect to the contested services for which the opposition has already been rejected, and no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vanessa PAGE

María del Carmen SUCH SANCHEZ

Vita VORONECKAITE

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.