OPPOSITION Nо B 3 101 639

 

Agora S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Valio Ltd, Meijeritie 6, 00370 Helsinki, Finland (applicant), represented by Castren & Snellman Attorneys Ltd., Eteläesplanadi 14, 00131 Helsinki, Finland (professional representative).

On 16/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 101 639 is upheld for all the contested goods, namely the goods in Class 32: beers; non-alcoholic beverages.

 

2.	European Union trade mark application No 18 078 105 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 078 105  (figurative mark), namely against some of the goods in Class 32. The opposition is based on the European Union trade mark registration No 17 936 808, KALMA (word mark). 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 32: Beer; aerated water; non-alcoholic beverages; mineral water [beverages]; fruit juice beverages; non-alcoholic beverages containing fruit juices; non-alcoholic sparkling fruit juice drinks; preparations for making beverages; syrups for making beverages.

The contested goods are the following:

 

Class 32: Beers; non-alcoholic beverages.

Beers and non-alcoholic beverages are identically contained in both lists of goods (including synonyms).

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 is considered to be average. The Opposition Division does not concur with the applicant that the degree of attention is higher, since there are no specialist goods and neither has the applicant adduced any further reasoning that would explain this.

 

c) The signs

 

KALMA
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 Opposition Division focuses the comparison of the signs on the Polish-speaking and Bulgarian-speaking part of the public where the word ‘KALMA’ constituting the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

 

As regards the contested sign, it is composed of a verbal element ‘ALMA’ written in white standard letters and a figurative element - an orange coloured butterfly shape, positioned above the letter ‘m’, both elements placed on a twisted oval shaped form in deep blue colour. The contested sign has no element that could be considered clearly more dominant than other elements, although it has to be noted 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).

 

The element ‘ALMA’ has no meaning for the relevant public and is, therefore, also distinctive. The shape of the butterfly will be associated with a butterfly, i.e. a type of insect with large, often brightly coloured wings. The twisted oval shaped form in deep blue colour is of a weaker character, as it will be perceived as a mere decorative element, and not as an element indicating the commercial origin of the goods. In consequence, bearing in mind that the relevant goods are beers and beverages, the ‘ALMA’ element, as well as the butterfly , are distinctive for the relevant goods.

Visually, the signs coincide in the letters ‘ALMA’ present in both sings. The word element ‘ALMA’ is distinctive for the contested mark and it is fully incorporated in the earlier mark. The signs differ in the first letter ‘K’ present only in the earlier mark and the figurative elements present only in the contested sign.

The signs are visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the number of the syllables, the rhythm and intonation and the sound of the letters ‛ALMA’, present identically in both signs. Aurally, as figurative elements are not subject to a phonetic assessment, the sound of the contested mark is fully incorporated in the earlier mark. The signs differ therefore only in the sound of the first letter ‘K’ present in the earlier mark.

 

Taking the above into consideration, the signs are aurally similar to high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive the butterfly of the contested sign as explained above, the earlier sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury 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

 

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods 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.

The earlier mark has a normal degree of inherent distinctiveness. The goods of the contested signs are identical to the goods of the earlier sign. As explained above, the goods target the public at large. The public’s degree of attentiveness is considered to be average.

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 are visually similar to an average degree and aurally similar to a high degree. The conceptual findings have been outlined above and lead to the conclusion that the signs do not share any concept.

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). It is a well-stablished principle in case-law that consumers tend to pay more attention to the beginnings of the marks and, as noticed above, the earlier mark displays an initial letter ´K¨ with no counteract in the contested sign. However, account must be taken also on the fact that the above principle not always prevail and highly depends on the overall impression that the marks convey. In the present case, following the principle of interdependence addressed above, i.e. the signs will be featured on identical products, the Opposition Division believe that the difference in that one letter cannot be seen on itself sufficient to outbalance the overwhelming coincidences.

 

It should be borne in mind that 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, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion, since in the present case the aural similarities between the signs were considered relatively high. Moreover, the differing concept conveyed by the figurative element will remain irrelevant when consumers address the signs aurally.

 

Considering all the above, there is a likelihood of confusion on the Polish-speaking and Bulgarian-speaking part of the public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 936 808. 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, 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 HOLLAND

Inés GARCIA LLEDO

Manuela RUSEVA

 

 

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.