* This material examines the opposition proceedings for the registration of a European Union trademark.

General framework: Protection against opposition in the EU trade mark registration process

Principles of opposition proceedings in the case of an application for registration of a trademark with EU scope

In the European Union trademark registration process, when the application submitted to the EU Intellectual Property Office (EUIPO) meets the conditions for submission and does not fall under the hypothesis of absolute grounds for refusal (according to Regulation (EC) 2017/1001 of the European Parliament and of the Council on the European Union trade mark) and the trade mark is published in the EU Trade Marks Bulletin, third parties acquire the right to file an opposition to the registration (ie oppose) within three months of the publication when:

• the mark applied for is identical to an earlier mark owned by them and where the goods and services for which registration is sought are identical to the goods and services for which the earlier mark is protected;
• because of its identity or similarity to the earlier mark and because of the identity or similarity of the goods or services which the two marks denote, there is a likelihood of confusion in the minds of people in the territory in which the earlier mark is protected (likelihood of confusion includes possibility to connect with the earlier mark).

If an opposition is filed, the registration proceedings are suspended until the opposition proceedings are completed. Upon determination of the admissibility of the filed opposition, the parties shall be granted a two-month conciliation period in which they may make contact and seek a way to settle their relationship in order to reach an agreement. In the absence of desire or failure in conciliation, the proceedings proceed to the so-called an adversarial part in which the parties present their arguments. The person making the opposition must prove the existence, validity and scope of protection of the said earlier rights, as well as his right to opposition.

Within each separate opposition proceeding, the opposition division of the EU Office for Intellectual Property analyzes the information (including evidence) obtained within the proceedings and analyzes the applicability of the grounds chosen by the opponent for filing an opposition against the registration of the trademark.

Specific aspects of practice

Unfortunately, in practice, it often turns out that finding a compromise solution that is satisfactory to both parties is a difficult task, which in many cases ends in failure.

Similar was the development of a case that arose in the practice of the consulting house “Velinov and Partners”, in which an opponent, who had previously registered his EU word trademark in class 33 exclusively for wine, filed an opposition against the registration of the trademark through his intellectual property representatives per client with a focus on fruit drinks (juices, smoothies, extracts, nectars, etc.). A similar opposition was filed by a second company with the main activity of wine production, established in the territory of Spain, but after a long correspondence, the matter was settled by signing an agreement, and the second opposition filed was withdrawn.

Similarity analysis between classes included in the scope of the trademark registration application: wine and fruit drinks

A likelihood of confusion (including likelihood of nexus) exists if there is a risk that consumers will believe that the goods and services in question originate from the same undertaking or, as the case may be, from economically related undertakings. Whether a likelihood of confusion exists depends on an overall assessment of several interrelated factors, including:

• the similarity of goods and services;
• the similarity of the signs;
• the distinctive and dominant elements of the conflict signs;
• the distinctiveness of the earlier mark;
• the relevant range of users.

In the practical case under consideration, the opposition was filed for the following conflicting classes and goods, according to the opponent:

• Applicant: Class 32: Fruit drinks; Juices; Fruit juice concentrates; Fruit-based beverages; Concentrated fruit juices; Fruit syrups; Nectars (Fruit -) [non-alcoholic]; Concentrates for making fruit drinks; Carbonated juices; Mixed fruit juice; Fruit flavored beverages; Non-alcoholic fruit extracts; Nectars (Fruit -); Tomato juice [beverage]; Vegetable juices [beverages]; Frozen fruit-based drinks; Soft drinks containing fruit juices; Beverages consisting of a mixture of pureed fruit and vegetable juices; Non-alcoholic fruit drinks; Non-alcoholic fruit extracts; Non-alcoholic preparations for preparing beverages; Non-alcoholic vegetable drinks; Organic fruit juices; Vegetable juices.
• Opponent: Class 33: Wine.The registered and applied for marks are verbal in nature, and their verbal elements have an indisputably high degree of similarity, therefore this aspect does not need to be analyzed in detail.

The next step is the assessment of the similarity between the claimed goods in Class 32 (soft drinks and beer) and the subject-matter of the registered mark – wine in Class 33 (alcoholic beverages).

The Opposition Division of the EU Intellectual Property Office concluded that there was no similarity between the goods cited above. The contested goods are fruit and vegetable based beverages or fruit and vegetable extracts for the production of beverages. However, wine is an alcoholic beverage obtained through a process of fermentation of grape must, consumed during a meal or as an aperitif.

In the analysis of the goods of class 32, attention is drawn to the fact that most of the goods are non-alcoholic beverages containing fruit or vegetable juices and flavors, sold and consumed in liquid form. The purpose of these drinks is to quench thirst, refresh or nourish with vitamins. There is overlap with wine in terms of end users and methods of use, but the products are located in different places in supermarkets and shops, to the extent that their nature is different. In general, the companies that produce them are different.

Moreover, the conflicting goods are neither competitive (due to their differences in taste and the presence or absence of alcohol) nor complementary (consumption of one does not necessarily lead to consumption of the other). The fact that all the goods belong to the beverage industry is insufficient to find any similarity. There are significant differences between them arising from their different nature (alcoholic versus non-alcoholic), which is a relevant factor that also affects the different purposes of the goods. To this effect is the Decision in Case T-175/06 of the Court of Justice of the EU [2008] – Mezzopane, ECLI:EU:T:2008:212.

Please note that the “Similarity” functionality developed by the EUIPO allows parties with a few clicks to obtain information on the presence or absence of similarity between two goods/services according to the national offices of the Member States, as well as in the practice of the EUIPO or the Intellectual Property Office of BeNeLux. When entering goods wine and fruit drinks, the system provides information that, according to EUIPO, similarity is not present, marking decision number T-150/17 of the CJEU [2018] FLÜGEL ECLI:EU:T:2018:641, on which it is based reference provided: http://euipo.europa.eu/sim/search.

Consulting house “Velinov and partners” has experts with extensive experience in the field of industrial property, who can assist you if you need legal advice regarding the registration of a trademark, as well as its protection in an opposition process.

Author: Att. Zlatka Kotsalova