OPPOSITION No B 3 019 315

State Drinks ApS, Godthåbsvej 36A, 4. th., 2000 Frederiksberg, Denmark (opponent), represented by Otello Lawfirm, Dalgasgade 25, 8, 7400 Herning, Denmark (professional representative)

a g a i n s t

Primal State GmbH, Prinz-Eugen-Str. 17a, 13347 Berlin, Germany (applicant), represented by Grosse Schumacher Knauer von Hirschhausen, Nymphenburger Str. 14, 80335 München, Germany (professional representative).

On 14/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 019 315 is upheld for all the contested goods, namely

Class 5: Food supplements; dietary supplements and dietetic preparations.

Class 25: Clothing; tee-shirts; hooded pullovers.

2. European Union trade mark application No 17 113 705 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 113 705 ‘Primal State’ (word mark), namely against all the goods in Classes 5 and 25. The opposition is based on European Union trade mark registration No 13 381 256 ‘STATE’ (word mark). The opponent invoked Article 8(1)(a) and (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 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 5: Food supplements; dietary supplements and dietetic preparations.

Class 25: Clothing; tee-shirts; hooded pullovers.

Contested goods in Class 5

The contested food supplements; dietary supplements and dietetic preparations are included in the broad category of, or overlap with, the opponent’s dietary supplements for humans and animals. Therefore, they are identical.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested tee-shirts; hooded pullovers are included in the broad category of the opponent’s clothing. Therefore, they 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 at the public at large.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price. In the present case, as the goods in Class 5 affect one’s state of health and nutrition, the relevant public will display a higher level of attention.

c) The signs

STATE	Primal State
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 earlier mark is a word mark, ‘STATE’. The applicant argues that ‘STATE’ is a basic English word understood throughout the EU and that it lacks distinctiveness. The Opposition Division notes however that the applicant did not file any evidence or convincing arguments to support this claim since it confined itself to English dictionaries to uphold its assertions. The Opposition Division notes that the term has no meaning in non-English speaking territories such as the Bulgarian and Polish speaking parts. Therefore, the focus will be on this part of the territory. Given that ‘STATE’ is meaningless in the described context, it is distinctive.

The contested sign is also a word sign, ‘Primal State’. These verbal elements have no meaning for the relevant public and are, therefore, distinctive to an average degree.

In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

Visually, the signs coincide in the distinctive verbal element ‘STATE’, which constitutes the entire earlier mark. The marks differ in the distinctive verbal element ‘PRIMAL’, placed in the beginning of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘STATE’, present identically in both signs. This coinciding element is distinctive. The pronunciation differs in the sound of the letters ‛Primal’ of the contested sign. This differing element is also distinctive.

Therefore, the signs are 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.

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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

In the present case, the goods are identical. The signs are visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment. The earlier mark has a normal degree of distinctiveness for the relevant public which is composed of the public at large displaying an average, to higher than average, degree of attention.

The earlier sign, ‘STATE’ is entirely, and without modifications, incorporated in the second part of the contested sign, ‘Primal State’, where it plays an independent and distinctive role.

It must also be noted that a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, 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).

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 the present case, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the use of the identical verbal element ‘STATE’ that they derive from the same undertaking or, at the very least, economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian and Polish 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 European Union trade mark registration No 13 381 256 ‘STATE’. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

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.