OPPOSITION No B 2 609 678

Energy Beverages LLC, 2390 Anselmo Drive, 92879, Corona, United States of America (opponent), represented by Bird & Bird LLP, 12 new Fetter Lane, EC4A 1JP, London, United Kingdom (professional representative)

a g a i n s t

Prophet Brand Strategy, One Bush Street, 7th Floor, 94104, San Francisco, United States of America (applicant), represented by Squire Patton Boggs (UK) LLP, 7 Devonshire Square, EC2M 4YH, London, United Kingdom (professional representative).

On 11/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 609 678 is upheld for all the contested services.

2. European Union trade mark application No 14 433 908 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 14 433 908 ‘RELENTLESS RELEVANCE’ (word mark). The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 3 319 381 ‘RELENTLESS’ (word mark)

2. European Union trade mark registration No 8 439 291 ‘RELENTLESS’ (word mark).

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

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.

a) The goods and services

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

Earlier mark 1

Class 35: The bringing together, for the benefit of others, of a variety of goods (excluding transportation thereof), enabling customers to conveniently view and purchase those goods; Provision of information and advice to prospective purchasers of goods from a database or via the Internet or other means; Promotional services in the field of sound and/or visual recordings.

Earlier mark 2

Class 35: Business services relating to the provision of sponsorship.

The contested services are the following:

Class 35: Advertising and marketing; Advertising services, namely, creating corporate and brand identity for others; Business consultancy.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

The contested advertising and marketing and advertising services, namely, creating corporate and brand identity for others consist in providing others with assistance in the sale of their goods and services by, inter alia, promoting the launch and/or sale of the client’s products. Therefore, these services overlap with the opponent’s promotional services in the field of sound and/or visual recordings of the earlier right 1 and therefore they are deemed identical.

The contested business consultancy overlap with the opponent’s business services relating to the provision of sponsorship of the earlier right 2. Therefore, they are deemed identical.

b) 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 services found to be identical are directed mainly at the specialised public, business customers with specific professional knowledge or expertise.

The degree of attentiveness of the relevant public is considered to be high depending on the price, degree of sophistication, or terms and conditions of the services purchased.

c) The signs

RELENTLESS	RELENTLESS RELEVANCE
Earlier trade marks	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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The degree of distinctiveness of the common element (or elements) must be taken into account. The more distinctive the common element is, the higher the degree of similarity in each aspect of the comparison (visual, phonetic and conceptual).

The earlier marks are both composed by the word element ‘RELENTLESS’ written in capital letters. It is meaningful for, at least, English speakers and will be associated by them, with the following meaning: ‘unceasingly intense’ according to https://en.oxforddictionaries.com/definition/relentlesshttps://en.oxforddictionaries.com/definition/relentless on 04/07/2018. However, this word applied to the relevant services has an average degree of distinctive character and for the public who does not understand it, as well.

The contested mark is a word mark with the elements ‘RELENTLESS RELEVANCE’. As mentioned above, the common element ‘RELENTLESS’, identically present in all marks, is distinctive.

The last element ‘relevance’, which is also an English word, refers to the ‘quality or state of being closely connected or appropriate’, according to https://en.oxforddictionaries.com/definition/relevance on 04/07/2018. Only English speakers will associate this word with a meaning. As a whole, the expression ‘RELENTLESS RELEVANCE’ is distinctive for the relevant services. It is distinctive as well for the rest of the public, that do not understand this expression.

Visually, the signs identically coincide in their first, distinctive, element ‘RELENTLESS’.

Even if the earlier marks contain one single element, the second element of the contested mark, ‘RELEVANCE’ coincides with the earlier mark ‘RELENTLESS’, in the first four letters and furthermore in the letters ‘N’ and ‘E’ (even if placed in a different order) and this reinforces the visual similarities..

As described above, the consumer tends to focus on the beginning of the signs, and the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the elements of the marks will be pronounced as RE-LENT-LESS and RE-LENT-LESS // RE-LE-VANCE.

The marks are aurally similar to the extent that the sound of their first element ‘RELENTLESS’ is identical. In addition, the pronunciation of the verbal elements ‘RELEVANCE’ and ‘RELENTLESS’ is close, since they share the same number of syllables, the first one being identical and the second one similar; ‘LE/LENT’. However, the sound of the last syllables ‘LESS’ and ‘VANCE’ are different.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to what was previously mentioned and the signs are conceptually similar for the English-speaking part of the public, as far as they both share the word ‘RELENTLESS’, while for the other part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible for this part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.

d) 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the services have been found identical and the degree of attention is considered to be high.

The earlier mark has an average degree of distinctiveness and the signs have been found visually and aurally similar to an average degree and conceptually similar for part of the public.

The common element in the earlier and the contested marks is their first element, ‘RELENTLESS’, which constitutes the entire earlier signs. Account must be taken that the consumer will focus on the beginning of the signs. Therefore, this component will have a greater impact on consumers.

Furthermore, particular attention has to be drawn to the circumstance that the coinciding verbal element ‘RELENTLESS’ is distinctive. Indeed, consideration must also be taken to the fact that the more distinctive the common element is, the higher the degree of similarity is in each aspect of the comparison (visual, phonetic and conceptual).

Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 319 381 ‘RELENTLESS’ and European Union trade mark registration No 8 439 291 ‘RELENTLESS’. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Jessica LEWIS

Loreto URRACA LUQUE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.