OPPOSITION No B 3 058 264

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Inversiones Pucara S.A., Torre de las Américas, Punta Pacífica, piso 15, Ciudad de Panama, Panama (applicant) represented by Elisabet Alier Benages, Consell de Cent, 417, 2°, 1a, 08009 Barcelona, Spain (professional representative).

On 28/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 264 is partially upheld, namely for the following contested goods:

Class 32: Non-alcoholic beverages; Beer; Waters; Fruit juice beverages; Energy drinks; Isotonic beverages; Soda water.

2. European Union trade mark application No 17 879 713 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 the European Union trade mark application No 17 879 713 for the word mark ‘MOON RIVER’. The opposition is based on German trade mark registration No 946 954 for the word mark ‘River’. 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.

According to Article 10(1) EUTMDR, a request for proof of use is only admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office pursuant to Article 8(2) EUTMDR. In the present case, even if a request for proof of use can be identified in the applicant’s observations submitted on 11/03/2019, within the period referred to above, it was not presented separately (on a separate sheet). Consequently, since the applicant did not submit the request for proof of use by way of a separate document as required, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 32: Non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries.

The contested goods are the following:

Class 32: Non-alcoholic beverages; Beer; Waters; Fruit juice beverages; Energy drinks; Isotonic beverages; Soda water.

Class 33: Alcoholic beverages (except beer); Natural sparkling wines; Wine.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term particularly used in the opponent’s list of goods, 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.

The applicant argues that there is a great difference between the markets of the opponent’s and applicant’s goods, the quality and the range of the goods sold by each company. According to the applicant, the beverages and alcoholic drinks or wines sold by the applicant are high-level goods, with a high price, directed at consumers with high purchasing power, whereas the opponent sells products with lower and very competitive prices directed at consumers with a low or middle low purchasing power. According to the applicant, not only the end users of the goods at issue are different but also the relevant distribution channels and retail markets, the kind of undertaking in the goods making and the presentation of the products are completely different. The applicant argues that it means also that the distribution channels and the producers of the goods in comparison are different, as well as that the companies and their goods clearly are not in competition with each other.

However, the task of the Opposition Division is to compare the goods as registered and as applied for and not as actually used, unless proof of use of the earlier mark has been submitted for particular goods. This is not the case here since the earlier mark being assessed is not subject to the use requirement as explained above. Consequently, the comparison of the goods in the present proceedings must be made on the basis of the goods of the earlier mark on which the opposition is based in Class 32 as registered and the relevant goods of the contested sign as applied for and against which the opposition has been directed.

Contested goods in Class 32

The contested non-alcoholic beverages includes, as a broader category the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested waters; fruit juice beverages; energy drinks; isotonic beverages; soda water are included in the broad category of, or overlap with, the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries. Therefore, they are identical.

The contested beer is at least similar to the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries as they share the same purpose, target the same relevant public and also usually share the same distribution channels. Furthermore they are in competition.

Contested goods in Class 3

The opponent argues that the contested Alcoholic beverages (except beer); Natural sparkling wines; Wine and the opponent’s goods in Class 32 are similar as they fall in the category of drinks and the opponent’s goods are often components of low alcoholic drinks and are often offered in the same distribution channels. The opponent also argues that the relevant goods are offered next to each other and that they overlap to a certain extent since they converge in terms of sales presentation or serving and can be sold next to each other or together. Furthermore, the opponent argues that the distinction between these goods is rapidly becoming blurred and the public will often move between these kinds of drinks especially since there is an increasing trend to switch from alcoholic drinks to lighter/reduced alcoholic mixed drinks or non-alcoholic beverages. Moreover, according to the opponent, consumers may also switch from one beverage to another, and the relevant drinks can replace each other. The opponent argues that the consumer may well conclude that the relevant products are manufactured under the control of the same undertaking etc.

As regards these above mentioned goods, the opponent refers to a previous decision of the Office (Decision No 1951/2004 of 15/06/2004 No B 488 579) to support its arguments in which the Opposition Division found wine, spirits and liquers similar to syrups and other lemon-based drinks belonging to Class 32.

At first, it should be mentioned that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

In any case, the Opposition Division is of the opinion that all the contested goods in Class 33 are dissimilar to the opponent’s goods in Class 32 according to the recent case law (4/10/2018, T-150/17, FLÜGEL, EU:T:2018:641; § 77-84).

The nature of these goods differs in terms of the presence or absence of alcohol. The average consumer, deemed to be reasonably well-informed and reasonably observant and circumspect, is used to and aware of the distinction between alcoholic and non-alcoholic drinks, which is, moreover, necessary, since some consumers do not wish to – or cannot – consume alcohol (15/02/2005, T-296/02, LINDENHOF, EU:T:2005:49, §54; 18/06/2008, T-175/06, MEZZOPANE, EU:T:2008:212; §79). The opponent’s goods are everyday consumer drinks. The applicant’s goods, on the other hand, are drunk almost solely, if not solely, on special occasions and for enjoyment and much less frequently than the goods covered by the contested mark. Also, the applicant’s drinks are no more than an atypical replacement for the opponent’s goods. The goods in question cannot therefore be considered to be in competition with each other. The fact that the goods in question may be consumed one after the other or even mixed is not such as to alter the finding of the dissimilarity of the goods. According to the case law, it should be noted that a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as premixed alcoholic drinks. To consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods which can be described as ‘drinks’ into one and the same category for the purposes of the application of Article 8(1) of Regulation No 207/2009 (4/10/2018, T-150/17, FLÜGEL, EU:T:2018:641; § 80; 3/10/2012, T-584/10, TEQUILA MATADOR HECHO EN MEXICO, EU:T:2012:518, §55). As such, the goods at issue are dissimilar to all the opponent’s goods in Class 32.

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

As mentioned above, the applicant argues that its goods are directed at consumers with high purchasing power in contrast to the opponent’s products that are directed at consumers with a low or middle purchasing power. The applicant also argues that the sign “RIVER” protected by the opponent’s trademark is a “white-label” or the “own-trademark” of Aldi Discount, that identifies several kinds of products, it being clear that this sign cannot be associated with a high-quality product. However, as explained above, for the present assessment it is not the goods as actually used by the parties that is relevant but rather the category of goods concerned as registered and as applied for. In this respect, the goods found to be identical or similar to a high degree are directed at the public at large. The degree of attention is considered to be average.

c) The signs

RIVER	MOON RIVER
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word element ‘RIVER’, being the only element of the earlier mark and the second word of the contested sign, is a rather basic English word that will be understood by at least part of the public who have a grasp of that language. For the remaining part of the public it will be perceived as a fanciful word element without any meaning. In any event, as it has no meaning in relation to the relevant goods, it is distinctive.

The same applies to the word element ‘MOON’ of the contested sign that will be understood as the natural satellite of the earth by at least part of the public in the relevant territory, either because it is a rather basic English word or due to its close proximity to the German word, Mond (information extracted from Duden at https://www.duden.de/rechtschreibung/Mond on 19/08/2019). For the remaining part of the public, it will be perceived as a fanciful word element without any meaning. In any event, as it has no meaning in relation to the relevant goods, it is distinctive.

The applicant argues that the first word is the most distinctive element of a sign and the one that the relevant consumer retains in his/her mind. However, in the present case, both elements are equally distinctive for the goods, as they do not have any meaning directly related to them. It is true that in general, consumers tend to focus on the beginning of the signs because they read from left to right. However, this does not render the first element more distinctive and in any case, this cannot cast doubt on the principle that an examination of the similarity of trade marks must take into account the overall impression produced by them.

Visually and aurally, the signs coincide in the distinctive element/sound ‘RIVER’ and differ in the additional element/sound ‘MOON’ in the contested sign. Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public that will understand the English words of the signs, they are conceptually similar to an average degree. For the remaining part, 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 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).

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, the goods that have been found identical, similar and dissimilar are directed to the public at large and the degree of attention of the relevant public will be average.

The signs have been found visually and aurally similar to an average degree and either conceptually similar to an average degree or the conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal.

Even if the contested sign introduces the additional distinctive verbal element ‘MOON’, which is not present in the earlier mark, the coinciding verbal element ‘RIVER’ is also distinctive to a normal degree for the relevant public under analysis and plays an independent distinctive role in the contested sign without necessarily constituting the dominant element (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30). In such a case, the overall impression produced by the contested sign may also lead the public to believe that the goods at issue derive, if not from the same company, from companies that are, at the very least, linked economically, in which case a likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31).

The applicant refers to previous decisions of the Office to support its arguments that there is no likelihood of confusion between the signs in dispute, namely decision of 29/11/2013, No B 2 095 787, ‘River’/’Rum River beverage company’ (fig), decision of 16/02/2012, R1869/2010-2, ‘River’/ ‘Rivero CZ’ and decision of 09/03/2018, R1868/2017-2, ‘River’/’Rivera I vini pregiati di puglia‘ (fig).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

In this respect, the Opposition Division notes that the case of ‘River’/‘Rum River beverage company’ (fig.) is not relevant to the present proceedings since the contested services were services in Class 39 and therefore the assessment made is not comparable to the present case.

As regards the case ‘River’/’Rivera I vini pregiati di puglia‘ (fig.) the relevant goods (alcoholic beverages including wines) covered by the contested mark were found to be dissimilar to the opponent’s goods non-alcoholic drinks (in line with the reasoning in this current case) and this was the reason for the absence of likelihood of confusion.

In the ‘River’/‘Rivero CZ’ decision referred to, in contrast to the signs in the present case, none of the words in the signs was identical and the goods concerned were found similar to only a low degree.

As a result, the circumstances and considerations made in the cases referred to by the applicant are different from the circumstances and considerations relevant to the case at hand. Consequently, the previous cases cited by the applicant are not of such a nature as to alter the outcome reached above.

In its observations, the applicant also argues that there are a great number of trademarks registered in the European Union that include the word ‘RIVER’ for goods in Classes 32 and 33, all of them later than the opponent’s German trademark. In support of its argument the applicant submits a list of TMview results.

However, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘RIVER’ Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a high degree 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.

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

Begoña VALIENTE URIARTE

Martin INGESSON

Kieran HENEGHAN

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.