OPPOSITION No B 2 891 540

Rauch Fruchtsäfte GmbH, Langgasse 1, 6830, Rankweil, Austria (opponent), represented by Michael Konzett, Fohrenburgstr. 4, 6700 Bludenz, Austria (professional representative)

a g a i n s t

Michael Neumüller, Am Süßbach 1, 85399, Hallbergmoos, Germany (applicant), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).

On 13/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 891 540 is partially upheld, namely for the following contested goods:

Class 29: Preserved, dried and cooked fruits; jellies, jams, compotes; fruit purée, fruit compotes.

Class 31: Fresh apples.

Class 32: Fruit beverages and fruit juices; syrups and other preparations for making beverages.

2. European Union trade mark application No 16 226 201 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 226 201, the word mark ‘Sunny Crunch’. The opposition is based on the following earlier rights:

 European Union trade mark registration No 11 851 326, for the word mark ‘SONNY’.

 European Union trade mark registration No 14 292 767, for the word mark ‘sonny’.

 Austrian trade mark registration No 258 592, for the word mark ‘SONNY’.

 Austrian trade mark registration ‘286 793’, for the word mark ‘RAUCH SONNY’.

 Polish trade mark application Z-375 561, for the word mark ‘SUNNY’.

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of Austrian trade mark registration No 258 592.

The date of filing of the contested application is 05/01/2017. The opponent was therefore required to prove that Austrian trade mark registration No 258 592 was put to genuine use in Austria from 05/01/2012 to 04/01/2017 inclusive.

The request was considered to be submitted in due time after the acceptance of the opponent’s request for the continuation of the proceedings according to Article 105(1) EUTMR. The request is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products, edible oils and fats.

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; energy drinks; lemonades.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 30/07/2018, within the time limit given by the Office in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Affidavit dated 26/06/2018 of the legal counsel of the opponent providing figures about the use, sale and distribution of fruit juices and fruit drinks under the trade mark ‘SONNY’ in years 2012 - 2017 in Austria (over EUR 4 000 000 each year apart from 2012, when it was over EUR 3 000 000).

 The affidavit contains photos of ‘SONNY’ product packages, bearing the following trade mark:

 Invoices dated in 2009-2017 (two to eight invoices for each year) of approx. 5 000 - 10 000 boxes of ‘SO’ Apfel 100%, Orange 100%, Multivitamin 100% (with the explanatory note ‘BRAND: Sonny’ on the invoices from years 2013-2017), issued to various entities in various cities in Austria.

The invoices show that the place of use is Austria. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. Some invoices are dated before or after the relevant period; nevertheless, they were presented together with the same types of invoices dated within the relevant period, and therefore they help to confirm the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C 259/02, Laboratoire de la mer, EU:C:2004:50).

The invoices, together with the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The invoices show use of the mark ‘SONNY’ or the abbreviation ‘SO’, also explained on some of the invoices as ‘Brand: ‘Sonny’. The opponent and the affidavit also clarify that ‘SO’ on the invoices is an abbreviation for ‘Sonny’. ‘SO’/’Sonny’ appear on the invoices with descriptive additions such as ‘apple’, ‘orange’ and ‘multivitamin’, which do not affect the distinctive character of the mark. The typeface used on the packaging and the sun in the background are decorative elements which do not affect the mark’s distinctive character either. Therefore, the evidence shows that the mark has been used in accordance with its function and as registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 32: Fruit drinks and fruit juices.

There is no evidence at all regarding any of the other goods for which the mark is registered. Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 14 292 767.

a) The goods

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

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

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

The contested goods are the following:

Class 29: Preserved, frozen, dried and cooked fruits; jellies, jams, compotes; fruit purée, fruit compotes.

Class 31: Fresh apples; apple trees and apple tree seedlings; propagation material for varieties of apples.

Class 32: 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.

Contested goods in Class 29

The contested preserved and cooked fruits; compotes; fruit purée, fruit compotes, are highly similar to the opponent’s sauces (condiments) in Class 30 as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested jellies, jams are similar to the opponent’s honey in Class 30 as they have the same purpose. They usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested dried fruits are similar to a low degree to the opponent’s confectionery. The goods under comparison are targeted at the same consumers looking for sweet snacks. Moreover, they can originate from the same producer and can be found at the same points of sale.

The contested frozen fruits, at the same time, are dissimilar to all the goods of the opponent in Classes 30 and 32. The goods differ in nature and purpose. The producers of these goods are distinct from those of the goods of the opponent. They are distributed via different sales channels or are found in different parts of supermarkets.

Contested goods in Class 31

The contested fresh apples are similar to a low degree to the opponent’s fruit juices in Class 32 as they usually coincide in producer, relevant public and distribution channels.

The contested apple trees and apple tree seedlings; propagation material for varieties of apples, however, do not have any point of contact and are dissimilar to the opponent’s goods in Classes 30 and 32. The purpose of the contested goods is to grow apples, whereas the opponent’s goods are beverages, various foodstuffs for immediate consumption or cooking or baking. The goods are not usually produced by the same entities and they are not sold via the same distribution channels. These goods are not in competition and neither are they complementary. Consequently, these goods are considered to be dissimilar to the goods of the earlier mark.

Contested goods in Class 32

The goods fruit beverages and fruit juices; syrups and other preparations for making beverages identically appear on both lists.

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 are directed at the public at large. The degree of attention is considered to be average.

c) The signs

sonny	Sunny Crunch
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 contested mark is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish and Polish-speaking part of the public. The elements ‘sonny’, ‘Sunny’ and ‘Crunch’ are meaningless in these territories and their distinctiveness is therefore average.

In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are depicted in upper or lower case characters, or in a combination thereof.

Visually, and aurally the signs coincide in the letters ‘s*nny’. They differ in the (sound of the) second letter ‘o’/’u’. Nevertheless, this difference, placed in the middle of the earlier mark and in the middle of the first element of the contested mark produces a similar visual impression and sound in the territories subject to the present assessment.

The marks furthermore differ in the element ‘Crunch’ of the contested mark. At the same time, 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.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 in Austria, the Czech Republic, Germany, Italy and the Slovak Republic 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 as a whole has no meaning for any of the goods in question from the perspective of the analysed public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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.

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).

Some of the goods are identical and some of them are similar, to a high, average or low degree.

The earlier sign is visually and phonetically similar to the initial element of the contested mark; these words only differ in their second letter which nonetheless produces a similar sound. The additional element ‘Crunch’ in the contested sign or the slight difference in the letters ‘o’/’u’ does not prevent consumers with an average degree of attentiveness to assume that the goods come from the same or economically linked undertakings. This finding also applies to goods which have been found similar to a low degree. Given that the similarity is placed in the initial element of the contested sign, the similarity of the signs outweighs the low degree of similarity found between the goods.

Indeed, 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), which is a common practice in the food industry.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish and Polish- speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 292 767. 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 or similar to varying degrees to those of the earlier trade mark.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 11 851 326 (the word mark ‘SONNY’) covering non-alcoholic beverages; beverages with fruits; fruit juice; fruit nectars in Class 32.

 Austrian trade mark registration No 286 793 (the word mark ‘RAUCH SONNY’) covering coffee, iced tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice in Class 30 and beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; fruit nectars; syrups and alcoholic preparations for making beverages in Class 32.

 Austrian trade mark registration No 258 592 (the word mark ‘SONNY’) in relation to which genuine use has been found for fruit drinks and fruit juices in Class 32.

These marks are identical to the one which has been compared, or less similar because of the additional word ‘RAUCH’ not present in the earlier mark. More importantly, they cover the same or a narrower scope of goods, and therefore the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The opposition is also based on Polish trade mark application Z-375561 (the word mark ‘SUNNY’), covering the following goods:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical or veterinary 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 beverages; fruit beverages, fruit juices and fruit nectars; syrups and other preparations for making beverages.

This earlier application covers the same scope of goods in Classes 30 and 32 as the earlier marks compared above, and therefore the outcome cannot be different with respect to goods for which the opposition has already been rejected. Moreover, this application covers goods in Class 5 which are mainly pharmaceuticals and other preparations for medical or veterinary purposes, and related goods. They have no points of connection with the remaining contested goods: frozen fruits; apple trees and apple tree seedlings; propagation material for varieties of apples. These goods differ in nature and have different producers, distribution channels. They are neither complementary nor are they in competition. Therefore, the Opposition Division finds that no likelihood of confusion exists with respect to those goods.

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

Anna ZIOŁKOWSKA

Marianna KONDAS

Begoña URIARTE VALIENTE

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.