OPPOSITION No B 2 600 735

Infisport, S.L., Pol. Parque Sur, Pavias Nave G-2, 12006 Castellón, Spain (opponent), represented by Rousaud Costas Durán, S.L.P. C/Escoles Pies, 102 (P° Bonanova) 08017 Barcelona, Spain (professional representative)

a g a i n s t

Marc Wallendorf, Schützenweg 11, 9470 Buchs, Switzerland (applicant), represented by Christiane Krüger, Lindenstr. 77, 40233 Düsseldorf, Germany (professional representative).

On 06/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 600 735 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 259 618, namely some of the goods and services in Classes 3 and 35 and all the goods in Classes 5, 30 and 32. The opposition is based on European Union trade mark registration No 6 854 525. 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.

1. The goods and services

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

Class 5: Food supplements for pharmaceutical or medicinal purposes for sports people; nutritional supplements for medical purposes; dietetic substances, foodstuffs and beverages adapted for medical use; mineral nutritional supplements; appetite suppressants for medical purposes; vitamin preparations; amino acids for medical purposes; lecithin for medical purposes.

Class 32: Non-alcoholic and and drinks; isotonic beverages; non-alcoholic carnitine-based beverages; fruit drinks and fruit juices; essences for making beverages; preparations for making beverages.

The contested goods and services are the following:

Class 3: Cosmetic preparations, included in class 3, in particular oils, lotions, creams, dusting powder, bath products, shampoo, sunscreen preparations.

Class 5: Pharmaceutical preparations; dietetic foodstuffs and beverages adapted for medicinal purposes; vitamin drinks; dietary supplements for humans; dietary supplements, not for medical purposes, with added vitamins, minerals, trace elements, hyaluron, either singly or in combination; food supplements for non-medical purposes.

Class 30: Tea and beverages with a tea base; dietetic food, included in class 30.

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

Class 35: Wholesaling and retailing, including via the internet, in the field of foodstuffs and beverages, in particular in relation to dietary supplements and beverages, and in the field of cosmetics.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 3:

An interpretation of the wording of the list of goods and services is required to determine the scope of protection. The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested cosmetic preparations, included in Class 3 are intended for enhancing the physical appearance of persons, for beautifying. These goods do not share any relevant criteria with the opponent’s dietetic substances in Class 5 or beverages in Class 32.

Their nature and purpose are different, they are not in competition, nor are they complementary. They do not coincide in producers. The sole fact that they might be distributed in the same sales outlets as the opponent’s dietetic substances, e.g. pharmacies, is not sufficient to lead to the finding of similarity. Equally, the opponent’s argument that some cosmetics may have nutritional purposes has little relevance as in any event they would not coincide with the overall medical purpose of the opponent’s goods in Class 5. The goods are dissimilar.

Contested goods in Class 5:

The contested dietetic foodstuffs and beverages adapted for medicinal purposes; vitamin drinks; dietary supplements for humans; dietary supplements, not for medical purposes, with added vitamins, minerals, trace elements, hyaluron, either singly or in combination; food supplements for non-medical purposes all belong to the broader category of the opponent’s dietetic substances, foodstuffs and beverages adapted for medical use. Therefore, there is identity among these goods.

The opponent’s dietetic substances are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the contested pharmaceutical preparations (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The consumers coincide and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

Contested goods in Class 30:

Tea and beverages with a tea base are similar to the opponent’s non-alcoholic beverages in Class 32. They can coincide in purpose, i.e. to serve as refreshment and quench thirst, as well as in producer, end user and distribution channels. Furthermore, they are in competition.

The contested dietetic food, included in class 30 and the opponent’s foodstuffs adapted for medical use are different in their final purpose (medical or not) but they are similar in nature and method of use. Moreover, the goods at issue can be produced by the same companies and are targeted at the same public to whom they are sold through the same distribution channels such as pharmacies and drugstores. Therefore, these goods are similar.

Contested goods in Class 32:

Non-alcoholic beverages/drinks; fruit beverages/drinks and fruit juices are identically contained in both lists of goods.

Mineral and aerated waters are included in the broad category of the opponent’s non-alcoholic beverages.

Syrups and other preparations for making beverages are included in the opponent’s preparations for making beverages.

All the contested goods in Class 32 are, thus, identical.

Contested services in Class 35:

In accordance with the opponent’s argument, as for the contested wholesaling and retailing, including via the internet, in the field of foodstuffs and beverages, in particular in relation to dietary supplements and beverages, it should be borne in mind that retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 33). The opponent’s earlier sign covers dietetic substances, foodstuffs and beverages adapted for medical use in class 5 and beverages in Class 32, which are therefore similar to a low degree to the contested services.

Such a link however cannot be established for the contested wholesaling and retailing, including via the internet, in the field of cosmetics, given that cosmetics are not covered by the earlier sign. These services are consequently dissimilar to the opponent’s goods.

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, especially the non-alcoholic beverages, beverage preparations, tea, dietetic food in Class 30 and retail and wholesale services are mainly directed at the public at large, with an average degree of attentiveness.

At the same time, as regards pharmaceutical preparations and dietetic substances for medical purpose the relevant public consists of both qualified medical professionals and the general public, without any specific medical knowledge. The degree of attentiveness of both groups will be high since the health considerations will prompt also the public at large to examine products with particular scrutiny and request professional assistance when purchasing these goods.

3. The signs

	LIQUID LE
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 earlier mark is a figurative mark consisting of the capital letter “L”, followed by a hyphen, followed by the term “quid” written in a lower case font.

The contested sign is a word mark “LIQUID LE”.

The term “LIQUID” in the contested sign refers, in English, to a physical state that is flowing, fluent, or smooth, or a substance with such characteristic. Apart from the English-speaking relevant public, this meaning will also be perceived by the French, Spanish, Portuguese, and Italian-speaking part of the relevant public, given the word’s almost identical equivalents existing in their official languages (liquide, líquido, liquido respectively). The relevant professional medical public throughout the EU is also likely to be familiar with such a term.

Bearing in mind that the relevant goods, i.e. pharmaceuticals, dietetic substances, dietetic food, tea, and especially beverages are all commonly sold in liquid form, for this part of the relevant public the term “liquid” merely describes a characteristic of these goods, namely their physical state. As such, this term is devoid of distinctive character for the goods at hand and also for the retail and wholesale services selling them.

In the rest of the relevant territory, this element as well as the contested sign as a whole has normal distinctiveness.

As for the earlier sign, it cannot be excluded, as the opponent argues, that the same concept of “liquid” as mentioned above will also be discovered by part of the relevant public in the earlier sign’s verbal element “L-quid”, in which case similar considerations would apply. In such a scenario, the earlier sign “L-quid” would have lower than normal distinctive character for part of the relevant public, although it would still retain certain distinctiveness due to the unusual representation of the word “liquid”.

Where the meaning of liquid is not seen in the mark, or the word is not understood, the earlier sign has normal distinctiveness.

The concept of the single letter “L” in the earlier sign will be perceived as such, i.e. a letter of the Latin alphabet, throughout the relevant territory.

The Opposition Division also acknowledges the applicant’s arguments and notes that it cannot be excluded that part of the Spanish-speaking relevant public might also perceive the earlier sign as “Ele quid”, meaning the essential/the point, or that part of the relevant public will understand “quid” referring to the British pound.

Visually, the signs coincide in their initial letter “L”, as well as the letter sequence “quid”, although it should be noted that this latter sequence is an individual element of the earlier sign separated by a hyphen from the single letter “L”, while in the contested sign all these elements create one distinct word in which the term “quid” is no longer recognisable as an independent element.

For the part of the public, which perceives a meaning of “liquid” either only in the contested sign, or also in the earlier sign, the coincidence between the signs will be merely confined to an element lacking or having less than average distinctive character.

In any event, the signs also differ in the element “LE” of the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, the earlier sign will be pronounced as “EL/EL(L)E”-“QU-ID/QUID” and the contested sign as “LI”-“QU-ID/QUID”-“LE/EL-E”.

The pronunciation of the signs coincides in the sounds of the letters “QUID” present identically in both signs, although in the earlier sign it is preceded by the single consonant “L” which will usually be pronounced with the help of a vowel, such as “EL”, “EL(L)E”, whereas in the contested sign these sounds form an inseparable part of the word “LIQUID”.

In the context of the syllables “EL/EL(L)E”-“QU-ID/QUID” (the earlier sign) and “LI”-“QU-ID/QUID”-“LE/EL-E” (the contested sign), the sounds of the letters “QUID” are pronounced in different part of the signs, and there are also significant differences in the pronunciation of the initial syllables “EL/EL(L)E” and “LI”. Overall, the differences in pronunciation in the signs’ beginnings and ends outweigh the similarities created by the sounds “L” and “QUID”, also given their different position in the marks.

The signs will, in any event, differ in the final sounds “LE” or “EL-E” of the contested sign which have no counterpart in the earlier sign. This difference will have even greater relevance for the part of the public which perceives the descriptive meaning of “liquid” in the contested sign as for them the differing sounds of “LE” will be the most distinctive.

The opponent argues that the earlier sign will also be pronounced as “LIQUID”. In such a scenario, the concept of “liquid” would necessarily need to be discovered in the earlier sign thereby prompting the relevant public to pronounce the earlier sign as such. This would lead to the signs sharing an aurally identical element, however, which would be devoid of distinctive character.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the signs may be conceptually identical, for the part of the relevant public which perceives the concept of liquid in the earlier sign as well as in the contested sign. However, in this case such identity has little relevance given that it concerns a non-distinctive element.

In any other case, the signs would not be conceptually similar, given that the concept of the letter “L” will be perceived in the earlier sign in any event, while the contested sign will either be meaningless or would evoke the – non-distinctive – concept of a liquid physical state. The conceptual difference may even be further accentuated in the eventuality that the relevant public discovers further concepts in the earlier sign, i.e. the Spanish “the point” or the English pound.

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, from the perspective of part of the public in the relevant territory, mainly for part of the English, French, Spanish, Portuguese and Italian-speaking relevant public, the earlier sign will evoke the word “liquid” and therefore its distinctive character will be lower than normal, in accordance with what has been stated above in section c) of this decision.

The earlier mark has a normal degree of distinctiveness for the remaining part of the relevant territory, where it has no meaning in relation with any of the goods in question.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

In the present case, the coincidence between the signs is the most striking for the part of the relevant public which perceives the meaning of “liquid” in the earlier sign. However, in this case, the signs would only coincide in an element lacking in distinctiveness, whereas they would differ in the visual representation of the earlier mark and the distinctive “LE” element of the contested sign.

As regards the part of the relevant public which perceives a descriptive meaning only in the term “LIQUID” of the contested sign, the similarities between the signs would affect the non-distinctive element of the contested sign, while its distinctive “LE” element would set the signs apart.

Finally, for the part of the public which only perceives a concept in the letter “L” in the earlier sign, the signs are conceptually not similar. Moreover, the overlap in the initial letters and a string of four letters placed in different parts of the signs will not be perceived independently within the contested sign.

In either scenario, the coincidences will be outweighed by the differences which will enable the reasonably well informed and reasonably observant and circumspect consumers, and especially the highly attentive ones, to safely distinguish between the signs.

This conclusion applies even in the context of identical or similar goods, and especially for lowly similar services. For the dissimilar goods and services, one of the conditions for the application of Article 8(1)(b) is not fulfilled so a likelihood of confusion is excluded by definition.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Marianna KONDAS

Ric WASLEY

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.