OPPOSITION Nо B 3 059 184

 

J Wray & Nephew Limited, 234 Spanish Town Road, 11 Kingston, Jamaica (opponent), represented by Caramelli Lazzarotto Associati S.R.L., Corso re Umberto 10, 10121 Torino, Italy (professional representative) 

 

a g a i n s t

 

Thomas Wachtl, 1c Avenida Do Indico, 1990 Lisboa, Portugal (applicant), represented by Antoine Guerinot, 139 Rue Vendôme, 69006 Lyon, France (professional representative).

On 19/03/2021, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 3 059 184 is partially upheld, namely for the following contested goods:

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

Class 33: All the goods in this Class.

2. European Union trade mark application No 17 869 001 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 17 869 001 for the word mark ‘Apple Stone’, namely against all the goods in Classes 32 and 33.

The opposition is based on the following earlier marks:

- European Union trade mark registration No 444 828 for the word mark ‘APPLETON’;

- European Union trade mark registration No 13 129 581  ;

- European Union trade mark registration No 13 129 705  ;

- European Union trade mark registration No 13 129 754  ; all the last three marks being figurative marks.

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.

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 444 828.

a) The goods

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

 

Class 33: Alcoholic beverages; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic.

The contested goods are the following:

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

Class 33: Alcoholic beverages (except beers); cider.

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 32

The contested goods, namely beers, non-alcoholic drinks, except mineral and aerated waters are similar to the opponent’s alcoholic beverages in Class 33. They have the same nature. They usually coincide in relevant public and distribution channels. They can also coincide in producers.

Similarity is found between the broader categories of non-alcoholic beverages in Class 32 and alcoholic beverages (except beers) in Class 33, as some specific non-alcoholic drinks are similar to some specific alcoholic drinks. For example, alcohol free wine in Class 32 and wine in Class 33. There is a growing trend in the drinks market sector for winemaking companies to also produce and offer non-alcoholic wine as an alternative to alcoholic wine. Non-alcoholic wine often goes through the same fermentation and ageing process as alcoholic wine, only to have the alcohol removed at the last stages (either through distillation or filtration). Non-alcoholic wine is intended to be consumed in the same circumstances as alcoholic wine by consumers who cannot, or choose not to, consume alcohol. Since consumers will perceive them as alternative products they must also be considered to be in competition. It is not uncommon for non-alcoholic wine to be sold in wine shops or specialised wine sections in supermarkets. The broad category of the contested non-alcoholic drinks, except mineral and aerated waters include goods such as alcohol free wine and the opponent’s broad category of alcoholic beverages in Class 33 include goods such as alcoholic wine. Therefore, since the Office cannot dissect ex officio the broad category of the contested goods, they must be considered similar to the opponent’s goods.

It should be explained that preparations for making beverages in Class 32 and preparations for making alcoholic beverages in Class 33 are broad categories, which, in principle, can be considered similar because of very particular (other) goods under them being similar. Preparations for making beverages in Class 32, among other, include non-alcoholic fruit extracts used in the preparation of beverages. Furthermore, preparations for making alcoholic beverages in Class 33, among other, cover fruit extracts, alcoholic.

The broad category of the contested syrups and other preparations for making beverages includes goods such as non-alcoholic fruit extracts used in the preparation of beverages and since it cannot be dissected ex officio by the Office, it is considered similar to the opponent’s fruit extracts, alcoholic in Class 33 since these goods can thus have the same nature, method of use and share the same distribution channels. Furthermore, they can target the same relevant public and be produced by the same undertakings.

The remaining goods in this Class, namely fruit beverages and fruit juices are dissimilar to the opponent’s goods in Class 33. They differ not only in their nature and purpose, but also in their distribution channels, sales outlets, producers and method of use. Furthermore, they are neither in competition with each other nor necessarily complementary to each other.

Contested goods in Class 33

The contested alcoholic beverages (except beers) is a synonym to the opponent’s alcoholic beverages. Therefore, they are identical.

The contested cider is included in the broad category of the opponent’s alcoholic 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 are directed at the public at large. The degree of attention is average.

 

c) The signs

 

APPLETON	Apple Stone
Earlier trade mark	Contested sign

  

The relevant territory is the EU.

 

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 signs are both word marks as can be seen above. The protection of a word mark concerns the word as such. Therefore, it is irrelevant whether it is written in upper- or lower-case letters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (irregular capitalisation), which is not the case here.

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 verbal element ‘Stone’ in the contested sign is meaningless in certain territories, for example in those countries where Polish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

According to the case-law the word ‘apple’ is ‘a word that is widely understood within the EU … since it is a basic English word which furthermore has been popularized by the sale of IPads, IPhones etc.’ (27/07/2017, R 1848/2016-4, APPLE AMERICANO / APPLE DOPPIO). It was also confirmed in another decision of the Boards of Appeal in which it was stated that ‘apple’ is ‘a basic English word and … it is commonly used with reference to New York, ‘The Big Apple’, and in the trade mark ‘Apple’, used for many IT products … taking all this into consideration it must be expected that the meaning of the word ‘apple’ is commonly known’ (R 2271/2010-2, 11/01/2012, APPLETISER / APPLE SED).

It should be highlighted that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he/she will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (13/02/2007, T-256/04, ‘Respicur’, § 57).

Bearing in mind the above, in relation to non-alcoholic drinks, except mineral and aerated waters; alcoholic beverages (except beers); syrups and other preparations for making beverages; cider and beer, the verbal element ‘apple’ is likely to be seen as a very weak element, as it may allude to the content or the taste of apple.

Taking into account the above judgment, with regard to the verbal element ‘APPLETON’ of the earlier mark the letters ‘apple‘ will be associated with the meaning of ‘apple’ as explained above. However this verbal element, when considered as a whole, has no meaning and is distinctive for the part of the public under analysis.

Visually, the signs coincide in the letters ‘APPLE’ which make up the beginning of the sole verbal element of the earlier mark and the first verbal element of the contested sign. They also coincide in the string of letters ‘TON’ in both signs, namely ‘APPLETON’ of the earlier mark and ‘Apple Stone’ of the contested sign (in bold). With regard to the latter it is unlikely that this coincidence will be immediately detected by the public. However, they differ in the fact that the earlier mark is composed of a single verbal element and the contested sign contains two verbal elements. They differ also in two letters of the second verbal element in the contested sign, namely ‘Apple Stone’ (in bold).

Therefore, the signs are visually similar to a below average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛APPLETON’/’Apple *ton*’, present identically in both signs. The pronunciation differs in the sound of the letters ‛S’ and ‘e’ of the contested mark (i.e. ‘Apple Stone’), which have no counterparts in the earlier mark.

 

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 to the part of the public under analysis. As the signs will be associated with a similar meaning, which is however very weak for the goods at hand, the signs are conceptually similar to a very low 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 under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a very weak element (i.e. ‘apple’) in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

  

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 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 goods are partly similar, partly identical and partly dissimilar. They are directed at the public at large whose degree of attention is average. The signs are visually similar to a below average degree, aurally similar to an average degree and conceptually to a very low degree. The earlier mark’s distinctiveness is normal.

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).

The signs coincide in the letters ‘APPLE’, which make up the beginning of the sole verbal element of the earlier mark, and the first verbal element of the contested sign. They also coincide in the string of letters ‘TON’ in both signs, namely ‘APPLETON’ of the earlier mark and ‘Apple Stone’ of the contested sign (in bold). However, they differ in the fact that the earlier mark is composed of a single verbal element and the contested sign contains two verbal elements. They differ also in two letters of the second verbal element in the contested sign, namely ‘Apple Stone’. It should be also borne in mind that part of the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (15/01/2003, T 99/01, Mystery, EU:T:2003:7, § 48). Accordingly, the Opposition Division finds that the differences between the signs are not sufficient to outweigh the similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the 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 444 828 for the word mark ‘APPLETON’. 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 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 directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks (all being figurative marks):

- European Union trade mark registration No 13 129 581  ;

- European Union trade mark registration No 13 129 705,  ;

- European Union trade mark registration No 13 129 754  .

The above-mentioned trade marks contain the following goods in their lists of goods.

Class 32 Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; seltzer water; waters [beverages]; table waters; aerated water; lithia water; mineral water [beverages]; aperitifs, non-alcoholic; smoothies; whey beverages; aloe vera drinks, non-alcoholic; non-alcoholic fruit juice beverages; isotonic beverages; non-alcoholic beverages; non-alcoholic honey-based beverages; malt beer; ginger ale; beers; cocktails, non-alcoholic; essences for making beverages; non-alcoholic fruit extracts; extracts of hops for making beer; kvass [non-alcoholic beverage]; peanut milk [non-alcoholic beverage]; milk of almonds [beverage]; lemonades; must; beer wort; malt wort; grape must, unfermented; fruit nectars, non-alcoholic; orgeat; pastilles for effervescing beverages; powders for effervescing beverages; preparations for making beverages; preparations for making liqueurs; preparations for making aerated water; preparations for making mineral water; sarsaparilla [non-alcoholic beverage]; syrups for beverages; syrups for lemonade; soda water; sorbets [beverages]; fruit juice; tomato juice [beverage]; vegetable juices [beverages]; cider, non-alcoholic; ready to drink beverages, non-alcoholic.

Class 33 Alcoholic beverages (except beers); distilled spirits; rum; ready to drink alcoholic beverages.

The remaining contested goods that were found dissimilar in section a) of this decision are:

Class 32 Fruit beverages and fruit juices.

Fruit beverages and fruit juices are identically contained in the lists of goods under comparison.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements, namely a hilly landscape, and the additional word ‘ESTATE’, which are not present in the contested trade mark. Furthermore, the letters in the earlier marks are slightly stylised.

As it was explained the Polish-speaking public will recognize the meaning of the word ‘apple’. The same applies to the rest of the public in the European Union. Bearing in mind the goods in question, all being fruit beverages and fruit juices, the verbal element ‘apple’ is therefore likely to be seen as a very weak element, as it may allude to the content or the taste of apple.

The word ‘APPLETON’ of the earlier mark as such has no meaning for the vast majority of the public on the European Union. However, it can be seen as a surname by the English-speaking part of the public and other parts of the public in the European Union (e.g. the Dutch-speaking public). In any case, whether understood or not, it is distinctive.

The word ‘ESTATE’ of the earlier mark is meaningless for the vast majority of the public in the European Union. However, it can be understood by the English-speaking public as ‘an extensive area of land in the country, usually with a large house, owned by one person, family, or organization’ (extracted from the Oxford Dictionary at https://www.lexico.com/en/definition/estate on 09/03/2021), by the Romanian-speaking part of the public as ‘a car that has a long body and rear door with space behind rear seat’ (extracted from the Dexonline at https://dexonline.ro/definitie/estate on 09/03/2021) and by the Italian-speaking public as ‘the warmest season of the year; in the northern hemisphere it extends from the summer solstice to the autumnal equinox’ (extracted from the Treccani Dictionary at https://www.treccani.it/vocabolario/ricerca/estate/ on 09/03/2021). In any case, whether understood or not, the verbal element ‘ESTATE’ has no direct meaning for the goods in question and is, therefore, distinctive.

The goods found to be identical are directed at the public at large. The degree of attention is average.

The signs in question contain further figurative elements as it was explained above. 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). The figurative elements of the earlier marks can allude to some characteristics of the goods, namely that they are produced in an ecological manner. They have a limited distinctiveness and their role will be secondary. As a consequence, the verbal elements ‘APPLETONE ESTATE’ will have a stronger impact in the earlier mark. It should be noted that the first verbal element, although it is normally distinctive as such, contains a very weak element ‘apple’.

The stylization of the letters in the earlier marks is not particularly fanciful. It will therefore play a secondary role in the comparison.

Visually, the signs coincide in the letters ‘APPLE’ which is the beginning of the first verbal element of the earlier mark and the first verbal element of the contested sign. They also coincide in the string of letters ‘TON’ in both signs, namely ‘APPLETON’ of the earlier mark and ‘Apple Stone’ of the contested sign (in bold). However, they differ in the fact that the contested sign contains the additional verbal element ‘ESTATE’ which is distinctive. They differ also in two letters of the second verbal element in the contested sign, namely ‘Apple Stone’ (in bold). Furthermore, they differ in the depiction of the hilly landscape which is allusive as well as in the stylization of the letters which is not particularly fanciful. Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛APPLETON’/’Apple *ton*’ with regard to part of the public in the EU. However, at least the English-speaking public will not pronounce the letters ‘ton’ identically in both signs since ‘stone’ will be pronounced as ‘stoʊn’ and the letters ‘ton’ in the verbal element ‘APPLETON’ as ‘tʌn’. The pronunciation differs in the sound of the letters ‛S’ and ‘e’ of the contested mark (i.e. ‘Apple Stone’), which have no counterparts in the earlier mark. Furthermore, they differ in the verbal element ‘ESTATE’ of the contested sign. Therefore, the signs are aurally similar to a very low 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 (due to the fact they contain the element ‘apple’), the signs are conceptually similar to a very low degree.

Bearing in mind the above criteria of the global assessment, especially the interdependence rule, and the differences between the signs as well as only the very low visual, aural and conceptual similarities, the Opposition Division is of the opinion that there is no likelihood of confusion on the relevant public, even if the goods are identical.

As a consequence, there is no likelihood of confusion as regards these earlier marks and the opposition 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

 

 

Helen Louise MOSBACK

Michal KRUK

Saida CRABBE

 

 

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.