OPPOSITION No B 2 760 802

S.A. Bru-Chevron N.V., Les Bruyères 151, 4987 Stoumont (Lorcé), Belgium (opponent), represented by Calysta, Lambroekstraat 5A, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Tru Bru (Pty) Ltd, 194 Main Road, Walmer, Port Elizabeth, South Africa (applicant), represented by MW Trade Marks Ltd, 88 Kingsway, London WC2B 6AA, United Kingdom (professional representative).

On 25/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 760 802 is partially upheld, namely for all the contested goods, with the exception of the following goods

Class 30: Ices infused with tea.

2. European Union trade mark application No 15 406 804 is rejected for all the goods, with the exception of the above goods, for which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 406 804 (figurative). The opposition is based on, inter alia, Benelux trade mark registration No 433 049 ‘BRU’ (word). The opponent invoked Article 8(1)(b) and (5) 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 Benelux trade mark registration No 433 049.

a) The goods

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

Class 32: Spring, natural, mineral, aerated and non-aerated, magnesian, bicarbonated, ferruginous waters, table waters in general, lemonade, drinks for refreshment and drinks included in this class.

The contested goods are the following:

Class 30: Tea; beverages and ices infused with tea.

Class 32: Tea flavoured or tea based mineral waters and soft drinks; fruit drinks and fruit juices infused with tea; syrups and preparations for making the aforesaid.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 30

The contested tea and beverages infused with tea are similar to the opponent’s lemonades. Tea is the agricultural product of the leaves, leaf buds, prepared by various methods and refers to the fresh leaves, dried leaves and teas sold in teabags and in granulate form. Accordingly, the compared goods can have the same ultimate purpose, that is to quench thirst and are therefore products in competition. In this connection, they have the same relevant public and distribution channels. They may also originate from the same undertakings.

However, the contested ices infused with tea are to be understood as ‘edible ices infused with tea’. These goods, which may generally be qualified as desserts, have a different nature from the opponent’s goods, which are beverages. They are different in their purpose and methods of manufacture. It is unlikely that they originate from the same undertakings. They are neither in competition nor complementary. The fact that they may all be sold in food shops but in different sections to end users does not result in these goods being similar. Accordingly, the compared ices infused with tea are dissimilar to the opponent’s goods.

Contested goods in Class 32

The contested tea flavoured or tea based mineral waters and soft drinks; fruit drinks and fruit juices infused with tea are at least highly similar to the opponent’s lemonade. They serve the same purpose — to quench thirst, have the same method of use, target the same end users through the same distribution channels, may have the same manufacturers and are furthermore in competition.

The contested syrups and preparations for making the aforesaid are similar to the opponent’s lemonade. While the contested goods are used as a basis for preparing beverages, they target both the professional and the general public, since such goods are quite commonly offered in supermarkets to the general public for preparing beverages at home. Thus, the sales points and relevant public of these goods may coincide. Additionally, they may originate from the same undertakings.

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 goods found to be similar to varying degrees are directed at the public at large, as well as at a professional public, such as those working in the beverage or hospitality industry.

The degree of attention is average.

c) The signs

BRU
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 verbal elements ‘ORGANIC’, ‘INFUSION’, ‘ORGANIC’, appearing on the right-hand bottom part of the contested sign are barely perceptible due to their size and position. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

As for the perception of the verbal element ‘TRUBRU’ in the contested sign, even though the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The Opposition Division agrees with the opponent that it is likely that the English-speaking part of the relevant public will break this verbal element down into ‘TRU’ and ‘BRU’, seeing in ‘TRU’ a variation of the English word ‘TRUE, written incorrectly (13/11/2017, R 1431/2017-2, TruHybrid, § 21 and the case-law cited). This is especially the case because both words are pronounced identically and also because playing with the spelling of a word is common practice in trade and consumers are acquainted with it. It is common for words in advertisements to be written not as they should be, but in a modified form, and also shortened (7/06/2017, T-258/16, GINRAW, EU:T:2017:375, § 65 and the case-law cited). In this context, it is to be noted that the CJEU has confirmed that a basic understanding of English by the general public in the Netherlands, the latter being part of Benelux, is a well-known fact (09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26 and the case-law cited).

Therefore, for the above reasons it is considered that the majority of the relevant public in the Netherlands will easily perceive the word ‘TRUE’ in the element ‘TRUBRU’, since this is a quite basic English word and the Dutch public has at least a basic understanding of the English language.

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36). Consequently, the Opposition Division finds it reasonable to focus the analysis below on the perception of the Dutch public.

Given the meaning of ‘true’ (genuine, authentic), it is likely to be seen as alluding to characteristics of the goods at issue, and hence, its distinctiveness will be reduced.

The element ‘BRU’, which is the entire earlier mark and the last part of ‘TRUBRU’ in the contested one, will not evoke a concept for the majority of the relevant public and is, therefore, of normal distinctiveness.

The image of a can in the contested sign is not original but descriptive, since it will be perceived as an indication of the liquid form of the goods at issue, since cans are a usual container for liquids.

Given the proportions of the elements of the contested sign, ‘TRUBRU’ is clearly its dominant element.

Visually and aurally, the signs coincide in ‘BRU’, which is the entire earlier mark and the last part of the dominant element of the contested one. On account of the fact that the entire earlier mark is included in the contested one as an identifiable separate element (at least the majority of the relevant consumers will break down ‘TRUBRU’, as explained above), the signs are considered visually and aurally similar at least to an average degree. The fact that the differing ‘TRU’ is at the beginning of the contested sign may not outweigh the coincidence, since due to the brevity of ‘TRUBRU’ the consumers are likely to grasp the element in its entirety. Moreover, due to the allusive connotations of ‘TRU’, it is the invented word ‘BRU’ that will carry more weight in the consumer’s perception.

Conceptually, reference is made to the explanation above. Since one of the signs will not be associated with any meaning, 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.

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.

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’).

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 does not create associations related to 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.

e) 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).

In the case at hand, it has been established that part of the goods at issue are similar to varying degrees and that another part of the goods are dissimilar. The public at large and the professional public with an average degree of attention are targeted by the goods at issue. The signs are visually and aurally similar to at least an average degree and conceptually not similar. The earlier mark has a normal degree of inherent distinctiveness regarding the relevant goods.

Considering the above findings, it is concluded that there is a likelihood of confusion on the part of the Dutch public. In particular, the entire earlier mark, which is an invented word and as such is more likely to draw the attention of the consumer (6/10/2004, T‑356/02, VITAKRAFT, EU:T:2004:292, § 52), is included as an identifiable element in the contested mark’s dominant element. Moreover, the other part of the contested sign’s verbal element is of reduced distinctiveness.

In this respect, 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 this context, 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), for example intended for goods prepared in an authentic/traditional manner.

Considering all the above, there is a likelihood of confusion on the part of the Dutch public with respect to the goods found to be similar to varying degrees. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of Benelux is sufficient to reject the contested application.

Therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 433 049.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods 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 the opponent’s Benelux trade mark registration No 433 049, and directed at these goods, cannot be successful.

Since the opposition is partially 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 reputation as claimed by the opponent and in relation to the goods found to be similar to varying degrees. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on European Union trade mark registration No 149 161 ‘BRU’ (word) and Benelux trade mark registration No 971 986 (figurative). Since these marks covers the same scope of goods as the earlier mark reviewed above, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods on the basis of these earlier rights.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier Benelux trade mark registration No 433 049 ‘BRU’ has a reputation in Benelux.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 04/05/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Benelux prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 32: Spring, natural, mineral, aerated and non-aerated, magnesian, bicarbonated, ferruginous waters, table waters in general, lemonade, drinks for refreshment and drinks included in this class.

Only the following goods of the contested application are relevant for this assessment:

Class 30: Ices infused with tea.

For the remaining contested goods the contested application has already been rejected on the grounds of Article 8(1)(b) EUTMR.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 06/11/2018, the opponent submitted evidence in support of its reputation claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Extracts of annual reports of Spadel group, to which the opponent belongs, for the years 1991-1999, 2005-2007, 2010-2017 including. The extracts show that Spadel group conducts activities in the mineral waters and soft drinks industry in Belgium, Luxemburg and the Netherlands and that one of the marks under which it commercialises its goods is the earlier mark. The reports also contain some figures on the marketing expenditures of the group per entity (and not per brand), the market share of the BRU brand in 2011 in Belgium and Luxemburg, as well as information on the changes in the market share of BRU-branded goods for some of the years. Some reports also refer to the fact that BRU-branded mineral waters have a leading position on the market of lightly sparkling waters.

 A declaration dated 03/01/2013 and signed by Marc du Bois (the representative of the managing director of the opponent) giving the sales figures and the global advertising budget of the opponent for the period 2005-2011.

 A declaration dated 08/09/2015 and signed by Marc du Bois (the representative of the managing director of the opponent) containing, inter alia, sales figures and the global advertising budget of the opponent for the period 2005-2014. The declaration refers to some enclosed documents, which however are not submitted by the opponent.

 Various magazine and newspaper articles (e.g. Femmes d’aujourd’hui, Ambiance, Exclusief, Le Meuse, Store Check), as well as online publications (e.g. from www.etvonweb.be, www.kokenphakken.be, www.trends.bg), issued mostly during the period 2010-2015. These materials are primarily of a promotional nature, as they contain advertisements of BRU-branded mineral water, articles of a promotional nature regarding BRU-branded mineral water (e.g. on its changed look, award for its advertising of ‘pearly water’), as well as information on events, supported by BRU-branded waters (e.g. the Regional Route of Flowers 2013, Lady Chef).

 A print-out from the internet site of the restaurant guide Gault Millau on the 1^st International Prize for Best Packaging Design, awarded to BRU mineral waters in the framework of Water Innovation Awards 2012.

 Print-outs from www.itqi.com, www.bru.be and www.lalibre.be, indicating (inter alia) that BRU mineral waters were awarded Superior Taste Award in 2011, 2013 and 2015.

 Extracts from the June 2010 Issue of the Belgian magazine Bizz, mentioning, inter alia, that the brands Spa Barista and BRU hold 40% of the market of sparkling mineral water in Belgium.

 Extracts from Le grand livre de l’eau, containing information on Spadel Group, where BRU is mentioned as one of its brands; it is also said that the annual sales of BRU water 15 years later (1981 is the year used as the starting point, i.e. in 1996) reached 40 million litres.

 Extracts from TRENDS Tendance of June 2002, containing information that BRU holds 14,5% of the market share of sparkling waters in Belgium in the ‘big distribution’, which is 75% of the market.

 An information note from Enterprendre Today, according to which Spadel Group is second in reputation in Belgium, according to a survey among more than 14,000 people conducted by akkanto in 2012.

It is to be noted that the materials are in French or Dutch, with most of them accompanied by short English translations of the relevant sentences or phrases.

The evidence clearly shows that the earlier mark has been in use in relation to mineral waters for many years (indications are available from 1991) and that information on BRU mineral waters in the form of advertisements, promotional articles, notes, as well as in the context of events and programs supported by BRU waters, has been present at least in Belgium for a significant period of time (including from 2005 to 2017). The submitted evidence also contains some indications on the market share of BRU mineral waters, which however are not sufficient to show the extent of use of the mark. In particular, the annual reports and the declarations from the opponent are internal documents, which have less weight, due to the fact that they stem from the interested party. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 490/2010-4, BOTODERM, § 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610).

Information from other sources (extracts from TRENDS Tendance) relates to one year only, which however is quite far from the date of filing of the contested trade mark. There is also information on the aggregate market share of BRU waters and other brands (e.g. extracts from Bizz), which does not allow the Opposition Division to reach any conclusion on the specific share of the BRU brand. Additionally, the fact that in 1996, 40 million litres of BRU mineral water were sold appears to show total sales and not sales in a specific market/territory only and also the year 1996 is more than 20 years before the filing of the opposition under review hereunder.

Furthermore, the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. The fact that Spadel Group, to which the opponent belongs, is widely known by the public does not show recognition of a specific brand or brands that are commercialised by this group. Moreover, the awards show recognition of the qualities of the product or the packaging design by specialised professional bodies, but they do not indicate recognition by the relevant public. Finally, it is true that in certain situations evidence on continuous promotional activities may be sufficient to show the recognition of a brand. However, as a rule, promotional activities are usually not sufficient on their own for establishing that the earlier mark has acquired a reputation, as the actual impact of publicity on the perception of the public is difficult to measure. In this particular case, without information on the actual outreach of at least some of the submitted articles and/or events and programs supported by BRU, the Opposition Division may not, without making suppositions, conclude that these promotional activities have as their result that a significant part of the public knows the brand. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition based on this ground must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Mads Bjørn Georg JENSEN

Teodora Valentinova TSENOVA PETROVA

Helen Louise MOSBACK

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.