OPPOSITION No B 2 592 981

Kaufland Česká Republika, v.o.s., Bělohorská 2428/203, 169 00 Praha 6, Czech Republic, (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Moray Fish Internacional, S.A., Transversal, 6 Parcelas 12-16 Mercabarna, 08040 Barcelona, Spain (applicant), represented by Olten Patentes y Marcas, C/Entença 332-334, 08029 Barcelona, Spain (professional representative).

On 17/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 592 981981 is upheld for all the contested goods, namely:

Class 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

2. European Union trade mark application No 14 226 716 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 226 716, namely against all the goods in Class 32 and some of the services in Class 43. The opposition is based on, inter alia, international trade mark registration No 1 171 809 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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 international trade mark registration No 1 171 809 designating the European Union.

1. The goods

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

Class 32: Mineral water; bubbly drinks and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Following the entry into force of the decision in case No B 2 590 720 (opposition against the same application) the specification of the contested mark no longer covers the services in Class 43 ‘Services for providing food and drink’. Therefore, the current opposition partially lost its subject and is now only directed against the following contested goods:

Class 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The goods mineral waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages are identically covered by both specifications (including synonyms).

The contested aerated waters are included in the opponent’s broader category of non-alcoholic drinks. The goods are identical.

The contested beer is similar to a high degree to the opponent’s non-alcoholic drinks, as they coincide in purpose, producer, distribution channels and relevant public. Moreover, they are in competition.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ODYSEUS
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

The earlier mark is a word mark – a misspelling of the name ‘Odysseus’ which will be perceived by the relevant consumer as referring to a legendary hero of the Greek mythology, a king of Ithaca. The misspelling is to be found in the missing letter ‘S’ and will not prevent consumers from perceiving the earlier mark with the meaning explained above.

The contested sign is a figurative mark comprising the verbal element ‘ODISSEA’ in white placed on a black background. Although it is a misspelling of the word ‘ODYSSEE’ it will still be perceived with the same meaning, namely: a long eventful journey and/or the famous Greek epic poem ‘The Odyssey’, by Homer, since the two verbal elements are still orthographically very close to each other. The difference in the last letter ‘A’ is also not enough to preclude the perception of the consumer of the verbal element of the contested sign with the meaning described above.

Bearing in mind the perception of the meaning of the verbal element of the contested sign it is likely that the figurative element will be perceived by part of the relevant public as alluding to an ancient ship or sea waves or both. Even though less likely another part of the public might not make this association and just see the figurative element as a decorative background without any particular meaning.

Both marks have no elements that could be considered clearly more distinctive or dominant than other elements. In the less likely event that the figurative element of the contested sign is perceived as a decorative background without attributing to it the meaning of a ship or sea waves or both, its distinctiveness is to be seen as lower than the distinctiveness of the verbal element.

Visually, the signs coincide in the letters ‘OD*S*E*’ and differ in the letters ‘Y’ of the earlier versus ‘I’ of the contested sign placed at the same third position in both marks, the second letter ‘S’ of the contested sign and the last letters ‘US’ of the earlier versus ‘A’ of the contested sign. The signs differ further in the slight stylisation of the typescript of the verbal element of the contested sign and the figurative element as described above, which has no counterpart in the earlier mark.

With regard to the latter difference it is to be noted that 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

It is also to be noted that the verbal element of the contested sign is composed of the same number of letters as the earlier mark.

The signs are visually similar to an average degree.

Aurally, both signs will be pronounced in four syllables, where the stress is on the third syllable. This renders a highly similar, if not identical rhythm and intonation. The pronunciation of the signs coincides in the syllables /O-DI-SE/, where there might be a slight difference in the pronunciation of the second syllable as long as the letter ‘Y’ is pronounced in German rather as ‘Ü’ and not so much as ‘I’. The signs differ in their fourth syllables, namely ‘US’ versus ‘A’. Bearing in mind that they are placed at the end of the two verbal elements this circumstance does not result in a major aural difference.

All in all, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the verbal elements of both marks with the meanings explained above. The concept of the figurative element of the contested sign as an allusion to an ancient ship or sea waves or both for part of the public only corroborates the meaning suggested by the verbal element. If perceived just as a decorative background, the figurative element of the contested sign does not have an impact on the conceptual comparison. Even though the concepts conveyed by both marks as such are not identical, there is still a very strong conceptual link between them since one refers to a person and the other to a journey or to a poem, the fact remains that the person ‘Odysseus’ is the major character both for the mythical journey and the epic poem by Homer named after the mythical Greek hero. The signs are, therefore, conceptually similar to a high degree.

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

The goods are identical or highly similar.

The signs have been found visually similar, aurally and conceptually similar to a high degree on account of the similarities established between the earlier mark and the verbal element of the contested sign.

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

Bearing in mind also the average distinctiveness of the earlier mark the Opposition Division finds that the differences between the marks as established above are not enough to counteract the similarities between them.

It is also to be noted that 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).

By applying the above principles, bearing in mind the identity/high similarity of the goods and the level of similarity between the signs established on visual, aural and conceptual level, the Opposition Division finds that there exists a likelihood of confusion on part of the relevant German public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 171 809 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right international trade mark registration No 1 171 809 designating the European Union leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lena FRANKENBERG GLANTZ

Plamen IVANOV

Judit NÉMETH

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.