OPPOSITION Nо B 3 095 866

 

Royal Unibrew A/S, Faxe Alle 1, 4640 Faxe, Denmark (opponent), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000 Århus C, Denmark (professional representative) 

 

a g a i n s t

 

Oatly AB, Stora Varvsgatan 6 A, 211 19 Malmö, Sweden (applicant), represented by Awa Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative).

 

On 18/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.

Opposition No B 3 095 866 is upheld for all the contested goods, namely: Class 32: Preparations for making beverages; non-alcoholic beverages; non-alcoholic drinks; oat-based beverages; oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruit drink beverages; oat-based smoothie beverages; oat-based fruit and berry drinks and beverages; oat-based drinks and beverages for slimming purposes; energy drinks; energy drinks containing caffeine; recovery drinks; sports drinks; functional beverages; functional water-based beverages; nut and soy based beverages; powders for the preparation of beverages, powders used in the preparation of fruit-based drinks and beverages; oat-based dietary supplement drink mixes [not milk substitutes]; oat-based dietary supplemental drinks in the nature of vitamin and mineral beverages [not milk substitutes]; powders for the preparation of beverages; powders for use in preparation of fruit based beverages.

 

2.	European Union trade mark application No 18 083 623 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 18 083 623 OAT CULT (word mark), namely against all the goods in Class 32. The opposition is based on European Union Trade Mark registration No 1 089 481, CULT (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: Energy drinks.

The contested goods are the following:

 

Class 32: Preparations for making beverages; non-alcoholic beverages; non-alcoholic drinks; oat-based beverages; oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruit drink beverages; oat-based smoothie beverages; oat-based fruit and berry drinks and beverages; oat-based drinks and beverages for slimming purposes; energy drinks; energy drinks containing caffeine; recovery drinks; sports drinks; functional beverages; functional water-based beverages; nut and soy based beverages; powders for the preparation of beverages, powders used in the preparation of fruit-based drinks and beverages; oat-based dietary supplement drink mixes [not milk substitutes]; oat-based dietary supplemental drinks in the nature of vitamin and mineral beverages [not milk substitutes]; powders for the preparation of beverages; powders for use in preparation of fruit based beverages. 

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

The contested energy drinks are identically contained in both lists of goods.

The contested non-alcoholic beverages; non-alcoholic drinks; oat-based beverages; oat-based natural energy drinks; energy drinks containing caffeine; recovery drinks; sports drinks; functional beverages; functional water-based beverages; nut and soy based beverages overlap with the opponent’s energy drinks. Therefore, they are identical.

The contested oat-based breakfast drinks; oat-based fruit drink beverages; oat-based smoothie beverages; oat-based fruit and berry drinks and beverages; oat-based drinks and beverages for slimming purposes; oat-based dietary supplement drink mixes [not milk substitutes]; oat-based dietary supplemental drinks in the nature of vitamin and mineral beverages [not milk substitutes] are similar to the opponents energy drinks, as they can coincide in producer, distribution channels, methods of use and relevant public.

The contested preparations for making beverages; powders for the preparation of beverages, powders used in the preparation of fruit-based drinks and beverages; powders for the preparation of beverages; powders for use in preparation of fruit based beverages are similar to the opponents energy drinks, as these goods can coincide in producer, distribution channels, methods of use and relevant public (see also R 2158/2018-5, of 30/07/2019, para 29).

Therefore, the applicants argument that part of these goods are similar only to a low degree, cannot be upheld. Furthermore, the goods must be compared as they are registered, and the circumstance, that in certain countries age restrictions for buying energy drinks are considered, is irrelevant. And even if energy drinks might fulfill an additional purpose besides quenching thirst, the fact remains that they are beverages and coincide in the similarity criteria mentioned above.

 

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, but also at business customers with specific knowledge. 

 

The degree of attention is considered to be average.

c) The signs

 

CULT	OAT CULT
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

The earlier right consists of the four letters ‘CULT’, and the contested sign contains the two verbal elements ‘OAT’ and ‘CULT’. Both signs are word marks and protected as such, regardless of the type face used.

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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, as the signs are composed of English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, as this is the scenario in which the signs show more similarities and thus chances of a likelihood of confusion are higher.

The word ‘CULT’ is an English word that means ‘a specific system of religious worship, esp. with reference to its rites and deity’ or ‘a thing that is popular or fashionable among a particular group’ (https://www.collinsdictionary.com/dictionary/english/cult).

Although it is possible for a particular drink to become fashionable or trendy, it cannot be assumed that it had developed cult status. Therefore the term ‘CULT’ is normally distinctive for the goods at issue.

The contested sign contains as a first verbal element the English word ‘OAT’. The element ‘OAT’ in the contested mark will be perceived as ‘an erect annual grass, Avena sativa, grown in temperate regions for its edible seed’ by the relevant public. Oat is known be a very healthy grain which provides due to its specific characteristics many benefits, including energy, and is used widely in the food and beverage industry.

Bearing in mind that the relevant goods are non-alcoholic beverages or preparations for non-alcoholic beverages, which can all contain oats, it is considered, contrary to what the applicant submits, that this element is non‑distinctive for these goods as it can indicate a characteristic or a quality of the goods at issue (see also decision on absolute grounds of 16/07/2018, concerning application No 17 885 890, Awesome Oat). The relevant public will not pay as much attention to this non‑distinctive element as to the other more distinctive element of the mark. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

  

Visually and aurally, the signs coincide in the verbal element ‘CULT’, which is of normal distinctiveness and the only element of the earlier right, and contained identically as second element of the contested sign. They differ in the word ‘OAT’ in the contested sign, which is however non-distinctive.  It is duly considered, as the applicant contends, that a difference between the signs lies in the first verbal element of the contested sign. However, the fact remains that the entire verbal element of the earlier mark is fully included as the last independent component of the contested mark. Even though the coincidence is in the last element of the contested sign, on account of the fact that the consumers would likely grasp the sign in its entirety, and that the entire wording of the earlier mark represents the second half of the contested right, the signs are considered to be visually and aurally similar to a high degree. Both signs share the independent, distinctive and identical word element ‘CULT’, bearing in mind also, that its remaining element is non-distinctive.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both marks will be understood as referring to ‘CULT’. So even if the contested sign might create an allusion to a trendy ‘OAT culture’, as the applicant submits, this does not create an entirely new concept, which would weaken or remove the meaning of ‘CULT’. Therefore, the signs are conceptually similar to a high degree bearing in mind also that ‘OAT’ is non-distinctive. 

 

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, but it claimed a high distinctiveness per se. However, it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. A higher degree of distinctiveness can only be found if intensive use of reputation is proven – which is however not the case here.

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 contrary to what the opponent invokes.

 

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 are identical or similar, and the signs are visually, aurally and conceptually similar to a high degree. The earlier mark has an average inherent distinctive character, and the public’s degree of attentiveness is average.

It is true that consumers more easily remember the beginning of the signs. However, the beginning of a trade mark is not always capable of attracting the consumers’ attention to a greater extent than the components which follow. In particular, the fact that a component of a composite trade mark is situated at the beginning thereof may be offset by the characteristics of the following component, provided that, as in the present case, it cannot be disregarded in the overall impression created by the composite trade mark (07/03/2013, T-247/11, ‘Fairwild’, ECLI:EU:T:2013:112, § 33 and § 34). Furthermore, two marks are similar where, from the point of view of the relevant public, they are at least in part identical as regards one or more relevant aspects (20/01/2010, T-460/07, Life Blog, EU:T:2010:18, § 51 and the case-law cited therein) as is the case here, since the signs share the identical and independent element ‘CULT’. Furthermore, the first element of the contested sign is non-distinctive and contributes hence very little to the mark function, namely an indication of the commercial origin of the goods.

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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), as the entire earlier mark is fully and identically contained in the contested sign.

Therefore, as the goods are identical or similar, and due to the visual, aural, and conceptual similarity of the signs, a likelihood of confusion exists.

Considering all the above, there is a likelihood of confusion on the part of 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.

The applicant refers to previous decisions of the Office to support its arguments. However, 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant, is not relevant to the present proceedings, as the sign at issue in this case law concerns the sign URBAN LODGE, which is not similar to the contested right in the case at hand (R 598/2009-2).

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.

Therefore, the opposition is well founded on the basis of the opponents European Union trade mark registration No 1 089 481. 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

 

 

Marta Maria CHYLIŃSKA

Karin KLÜPFEL

Peter QUAY

 

 

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.