OPPOSITION No B 3 019 026

Red Bull GmbH, Am Brunnen 1, 5330 Fuschl am See, Austria (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Alpha Group Co., Ltd., Auldey Industrial Area, Wenguan Rd., Chenghai District, 515800 Shantou City, Guangdong Province, People’s Republic of China (applicant), represented by Rösler · Rasch · Van Der Heide & Partner Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bodenseestr. 18, 81241 München, Germany (professional representative).

On 23/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 019 026 is upheld for all the contested goods, namely:

Class 25: Clothing; T-shirts; layettes; bibs, not of paper; swimsuits; raincoats; shoes; sports shoes; boots; hats; sports headgear [other than helmets]; hosiery; gloves; girdles; shower caps; sleep masks; scarfs.

Class 32: Beer and brewery products; flavoured carbonated beverages; juices; nut and soy based beverages; preparations for making beverages; beers; non-alcoholic fruit juice beverages; waters; waters [beverages]; non-alcoholic beverages; aerated water; vegetable juices [beverages]; fruit juices; smoothies; tomato juice beverages; essences for making beverages.

2. European Union trade mark application No 17 236 415 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 17 236 415 for the figurative mark , namely against all the goods and services in Classes 25, 32 and 41. However, in its observations dated 21/06/2019, the opponent restricted the scope of the opposition only to the goods in Classes 25 and 32.

The opposition is based on, inter alia, United Kingdom trade mark registration No 3 058 007 and international trade mark registration No 1 173 800 designating the European Union, both for the word mark ‘GIVES YOU WINGS’. The opponent invoked Article 8(1)(b) EUTMR in respect of these earlier rights and also Article 8(5) EUTMR in respect of the UK trade mark.

On the admissibility of earlier UK trade mark registration No 3 058 007

The applicant claims that this earlier mark should be disregarded as a valid opposing right because it has been filed in bad faith.

However, the applicant’s argument does not disqualify the UK trade mark as an earlier trade mark within the meaning of Article 8 EUTMR, because it is a validly registered national mark. The counterclaim of bad faith against an earlier trade mark on which an opposition is based is outside the scope of the present opposition proceedings.

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 United Kingdom trade mark registration No 3 058 007 and international trade mark registration No 1 173 800 designating the European Union.

a) The goods

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

Earlier UK trade mark registration

Class 32: Non-alcoholic beverages; soft drinks; energy drinks; whey beverages; hypertonic and hypotonic drinks (for use and/or as required by athletes); isotonic beverages; beers; malt beer; wheat beer; porter; ale; stout and lager; mineral waters; table water and aerated waters; fruit beverages and fruit juices; non-alcoholic vegetable or fruit juice beverages and non-alcoholic fruit extracts; syrups and other preparations for making beverages and syrups for lemonade; pastilles and powders for effervescing beverages; non-alcoholic aperitifs and cocktails; sherbets (beverages); smoothies.

Earlier international trade mark registration designating the EU

Class 25: Clothing, footwear, headgear, including T-shirts, blouses, sweaters, anoraks, wind resistant jackets, aprons, caps, hats, headbands, braces, belts (clothing), money-belts (clothing), sun visors; sportswear, footwear for sports, football boots and studs, ski boots; non-slipping devices for shoes; corsetry.

The contested goods are the following:

Class 25: Clothing; T-shirts; layettes; bibs, not of paper; swimsuits; raincoats; shoes; sports shoes; boots; hats; sports headgear [other than helmets]; hosiery; gloves; girdles; shower caps; sleep masks; scarfs.

Class 32: Beer and brewery products; flavoured carbonated beverages; juices; nut and soy based beverages; preparations for making beverages; beers; non-alcoholic fruit juice beverages; waters; waters [beverages]; non-alcoholic beverages; aerated water; vegetable juices [beverages]; fruit juices; smoothies; tomato juice beverages; essences for making beverages.

The term ‘including’, used in the opponent’s list of goods in Class 25, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 25

Clothing is identically included in both lists of goods.

The contested T-shirts; layettes; bibs, not of paper; swimsuits; raincoats; hosiery; gloves; girdles; scarfs are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested shoes; sports shoes; boots are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested hats; sports headgear [other than helmets]; shower caps are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested sleep masks are similar to a low degree to the opponent’s clothing, as they usually coincide in producer and distribution channels.

Contested goods in Class 32

Preparations for making beverages; beers; non-alcoholic fruit juice beverages; non-alcoholic beverages; aerated water; fruit juices; smoothies are identically included in both lists of goods.

The contested beer and brewery products include, as a broader category, the opponent’s malt beer. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested flavoured carbonated beverages are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

The contested juices; vegetable juices [beverages] include, as broader categories, the opponent’s non‑alcoholic vegetable juice beverages. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested nut and soy based beverages; tomato juice beverages are included in the broad category of the opponent’s non-alcoholic vegetable or fruit juice beverages. Therefore, they are identical.

The contested waters; waters [beverages] include, as broader categories, the opponent’s aerated waters. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested essences for making beverages are included in the broad category of the opponent’s syrups and other preparations for making beverages. 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 or similar to a low degreeare directed at the public at large.

The degree of attention is considered to be average.

The applicant claims that for the specific field of the opponent’s energy drinks a higher than average degree of attention from the consumer should be assumed. However, since those goods have not been compared to the contested goods in order to find a degree of similarity, the goods in question are not relevant to the present proceedings. In any case, as the opponent correctly points out, there is nothing to indicate that the high energy drinks and isotonic beverages (not for medical purposes) would be the subject of greater or less attention than that which the average consumer generally pays to everyday consumer goods (28/04/2016, T‑803/14, EU:T:2016:251, B’Lue, § 20).

c) The signs

GIVES YOU WINGS
Earlier trade marks	Contested sign

The relevant territory is the European Union, including the United Kingdom.

Both earlier trade marks protect the same word mark ‘GIVES YOU WINGS’. For reasons of simplicity, both marks will hereinafter be referred to as one mark in the singular.

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.

The signs contain elements that are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part, as this is the scenario in which the signs show more similarities and is thus where a likelihood of confusion would be most likely to arise, as it will be explained below.

The earlier mark consists of the English words ‘GIVES YOU WINGS’, which will be perceived by the relevant public as a slogan. The verbal form ‘GIVES YOU’ is an introductory expression, which does not provide any information on the commercial origin of the goods in question. The element ‘WINGS’ will be understood as ‘the two parts of the body of an animal or insect that it uses for flying’. Since this element has no meaning in relation to the goods in question, it is, therefore, distinctive. The relevant public will perceive the expression ‘GIVES YOU WINGS’, as a whole, as a metaphor referring to something meant to inspire or motivate someone to ‘fly’ or to achieve great things. Accordingly, the element ‘WINGS’ is more distinctive than the other elements to the extent that the emphasis is on this last word (see, in this line of argumentation, 17/11/2016, R 282/2015‑5, FLÜGEL / … VERLEIHT FLÜGEL et al, § 59 and 64).

The contested sign is a figurative mark containing the words ‘SUPER WINGS’, one above the other, and where the element ‘WINGS’ is depicted slightly bigger. The adjective ‘SUPER’ means ‘excellent, wonderful, marvellous’. It is a laudatory descriptive term and, as such, it is non‑distinctive. This adjective qualifies the noun ‘WINGS’, which is distinctive in relation to the goods in question. The public will not pay as much attention to this non‑distinctive element as to the other, more distinctive, element of the mark, ‘WINGS’. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

Furthermore, the element ‘WINGS’ contains some figurative elements on its left and right sides, which will be perceived as wings and, therefore, distinctive in relation to the goods in question.

The depiction of the planet Earth in place of the dot of the letter ‘I’ in the contested sign will be perceived as an indication that the goods are available/sold worldwide and is, therefore, weak. Furthermore, this figurative element plays a secondary role within the sign because of its position and size.

It must be recalled that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

In the contested sign, the word elements ‘SUPER WINGS’ are clearly the largest elements of the sign and, therefore, they are co-dominant when compared to the figurative elements present in the sign.

The applicant emphasises the importance of the beginnings of conflicting signs for the consumer’s perception of the signs. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

As already stated, in the present case, the relevant consumer understands the meanings of the conflicting signs, which are both composed of expressions formed in accordance with the English grammatical rules. Furthermore, in the earlier mark, the action introduced by the verbal form ‘GIVES YOU’ refers to the noun ‘WINGS’ and, similarly, in the contested sign, the adjective ‘SUPER’ qualifies the noun ‘WINGS’. Therefore, even if the element, that the signs have in common, appears in the last position, from a conceptual perspective, it is the most important and the most distinctive element in relation to the relevant goods.

Visually, the signs coincide in the element ‘WINGS’ and differ in the elements ‘GIVES YOU’ of the earlier mark and ‘SUPER’ of the contested sign, the latter being non‑distinctive. The signs also differ in the figurative elements of the contested sign, namely in the arrangement of its elements, the typeface of the letters, the shades of grey, the image of the wings and the depiction of the planet Earth.

Therefore, weighing up all these factors, the distinctive character of the elements present in the signs and their impact and the dominance issue, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllable ‘WINGS’, present identically in both signs. The pronunciation differs in respect of the words ‘GIVES YOU’ of the earlier mark versus ‘SUPER’ in the contested sign, both pronounced in two syllables. Even if the pronunciation of the signs differs in their beginnings, overall they have similar rhythms and intonations and, furthermore, the common element ‘WINGS’ is pronounced the same in both signs. Consequently, a certain phonetic similarity can be found to exist between the two signs taken as a whole (11/12/2008, T‑90/06, Tomorrow Focus, EU:T:2008:567, § 34 and 14/04/2011, T‑466/08, Acno focus, EU:T:2011:182, § 63-64).

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.

As the signs have been found similar in all the aspects 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 as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory.

A slogan is deemed to be distinctive if, apart from its promotional function, the public perceives it as an indication of the commercial origin of the goods and services. The expression ‘GIVES YOU WINGS’ does not provide direct and immediate information about the goods in question or their characteristics. Therefore, the Opposition Division considers that the inherent distinctiveness of the earlier mark is 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, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical and partly similar to a low degree. They target the general public with an average degree of attention. The inherent distinctiveness of the earlier mark is normal.

The signs are visually, aurally and conceptually similar to an average degree.

In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30; 12/07/2006, T-97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T-34/04, Turkish Power, EU:T:2005:248, § 43). The signs in conflict coincide in the element ‘WINGS’, which is the most distinctive verbal component in both signs. Furthermore, this is the element that will attract more attention from the relevant public, since it gives a meaning to both signs, as explained in detail in section c) of the present decision.

Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs. Furthermore, the other word elements contained in the signs, namely the verbal form ‘GIVES YOU’ in the earlier mark and the adjective ‘SUPER’ in the contested sign, play a secondary semantic role in respect of the main word, ‘WINGS’.

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. 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 present case, the similarities between the signs are sufficient to offset the lower degree of similarity found in respect of some of the goods in question.

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 UK trade mark registration No 3 058 007 and international trade mark registration No 1 173 800 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 extensive use or reputation, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the opponent’s UK trade mark registration No 3 058 007 and international trade mark registration No 1 173 800 designating the European Union lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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(5) 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, 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

Vít MAHELKA

Marta GARCÍA COLLADO

Chantal VAN RIEL

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.