OPPOSITION No B 2 930 058

Société des Produits Nestlé S.A., 1800, Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft MBB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

UAB "Pretendentas", Alytaus m. sav. Alytaus m. Ulonų g.33, Alytus, Lithuania (applicant), represented by ILAW, Konstitucijos pr.7, Business Centre „Europa“, 24th floor, 09308 Vilnius, Lithuania (professional representative).

On 29/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 930 058 is upheld for all the contested goods, namely

Class 11: Coffee machines, electric; electric espresso machines; electric coffee brewers; electric coffee filters.

2. European Union trade mark application No 16 568 016 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 568 016 , namely against some of the goods in Class 11. The opposition is based on international trade mark registration No 1 237 828 ‘DROP’ 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.

a) The goods

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

Class 11: Electric apparatus for preparing all types of beverages; electric coffee machines, coffeemakers and electric percolators; parts and component parts for all the aforesaid goods.

The contested goods are the following:

Class 11: Coffee machines, electric; electric espresso machines; electric coffee brewers; electric coffee filters.

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 contested goods are contained in the opponent’s broad category of electric coffee machines. Therefore, the goods are 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 goods found to be identical are directed both at the public at large and at professional customers.

The degree of attention is considered to vary from average to high, particularly in relation to goods used for industrial purposes, which may be in the case and in which circumstances the relevant goods may be of higher price, thus demanding an increased degree of attention.

c) The signs

DROP
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs consist of English words. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The contested sign is composed of the words ‘CRYSTAL DROP’ in blue uppercase letters and, above them, a device of various shades of blue which may be perceived as a ‘drop’ or as a crystal (diamond for example). The word ‘crystal’ meaning a transparent glass has average distinctiveness and so does the word ‘DROP’ since, contrary to the applicant’s assertion, neither word bears any relationship with the goods concerned. Indeed the mere fact that the goods are used to make coffee, and coffee as any liquid, is made up of drops is not a sufficiently close link for the word ‘drop’ to be descriptive of the goods or weak in any sense. With regard to the device, it can either be perceived as a decorative element with no meaning, or as an illustration of the semantic content of the sign’s words. Furthermore, and contrary to the applicant’s claim, none of the sign’s elements have a more dominant role than the other elements.

The earlier mark consists of one word ‘DROP’ which has average distinctiveness as explained in the preceding paragraph.

Visually, the signs coincide in the word ‘DROP which is the sole element in the earlier mark. The signs differ in the contested sign’s additional word ‘CRYSTAL’, device, typeface and colours. Since the coinciding component is the whole of the earlier sign and has a distinctive role in both signs, this is not fully offset by the contested sign’s additional word let alone by its figurative part or colours. Considering also the principle that the public will more easily refer to signs 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 must be concluded that the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the in the sound of their common word ‛DROP’. The pronunciation differs in the additional word ‘CRYSTAL’ of the contested sign, which has no counterpart in the earlier mark. The differing word adds two more syllables to the contested sign, however, the fact remains that the only word in the earlier mark is identically reproduced in the contested sign, and this coinciding word has independent distinctive role in both signs. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs contain the word ‘drop’, the signs are conceptually identical to that extent, which is counteracted to a certain extent by the fact that the contested sign conveys an additional meaning evoked by its differing word while its device either reinforces the concept of ‘crystal drop’ or could be seen as a crystal (diamond). Considering all these factors, it must be concluded that the signs are similar to an average degree.

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.

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.

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).

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).

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 covered are from the same or economically linked undertakings.

In the present case, the goods are identical whereas the signs are similar to an average degree on all aspects of comparison. The only word of the earlier mark is included in the contested sign where it plays a distinctive role, and this is not sufficiently counteracted by the contested sign’s additional elements as explained above. Furthermore, the identity of the goods is considered to be a factor that works in favour of a finding that consumers are likely to confuse the signs.

Considering all the above, there is a likelihood of confusion on the English-speaking part of the 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 invoked. It follows that the contested trade mark must be rejected for all the contested 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.

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

Vanessa PAGE

Ferenc GAZDA

Rasa BARAKAUSKIENE

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.