General Court confirms that "mineral waters" are similar to "soft drinks colas"

Two judgments of the General Court (Sixth Chamber) - Masafi Co LLC v Office for Harmonisation in the Internal Market (OHIM) (Cases T-248/14 and T-249/14), both rendered on November 25 2015 - have brought bad news to Masafi Co LLC, the applicant for the following Community trademarks (CTMs):

• JUICE MASAFI (and device) (No 009539727), filed on November 22 2010 for goods in Class 32:

• MASAFI (and device) (No 010330876), filed on October 11 2011 for goods in Classes 29 and 32:

Both CTM applications were opposed by Hd1 Limited, which invoked earlier rights deriving from the registration of the national word mark MASAFI (No 2551560), filed on June 29 2010 and registered since March 25 2011 in the United Kingdom for, among others, goods in Classes 29 and 32.

The applicant requested the annulment of the decisions of the Fourth Board of Appeal of OHIM in which the latter had upheld the opposition against JUICE MASAFI in its entirety, and had allowed the registration of MASAFI only for the following goods in Class 29: “alginates for food; edible birds’ nests; pectin for food; pollen prepared as foodstuff; protein for human consumption; rennet; weed extracts for food”.

The court considered that the applicant’s criticisms were unfounded, both in relation to OHIM’s conclusions regarding the similarity of the signs and in connection with OHIM’s comparison of the goods designated by the trademarks at issue.

Hd1 Limited invoked the provisions of Article 8(1)(b) of the Community Trademark Regulation (207/2009) (likelihood of confusion), arguing that the signs all featured the dominant verbal element 'Masafi' and pointing to the identity and close similarity of the goods in Classes 29 and 32.

The applicant claimed that the contested signs were distinguishable from the earlier word mark due to their specific typeface and graphical elements. However, the General Court dismissed this argument, focusing on the common verbal element 'Masafi' and holding that this common element was sufficient to confirm the similarity of the mark.

As far as the comparison of the goods was concerned, the court also dismissed the applicant’s arguments that the following were dissimilar:

• “mineral and aerated waters” versus “soft drink colas”;
• “fruit drinks and fruit juices” versus “vegetable drinks and vegetable juices”; and
• “preserved, cooked fruits; jams, compotes” versus “sauces (condiments)”.

Once again, the court confirmed that "mineral waters" are similar to "soft drinks" such as colas, irrespective of their differences, since they belong to the general category of everyday non-alcoholic drinks and are marketed through the same channels, offered to the same consumers and substitutable to a large extent.

The same applied to "fruit drinks/juices" as compared to "vegetable drinks/juices". In the court’s view, the mere fact that one category of beverages is sweeter than the other is not sufficient to eliminate all similarity between those goods.

With regard to the goods in Class 29 analysed in Case T-249/14, the court noted that “preserved, cooked fruits; jams, compotes” and “sauces (condiments)” are quite capable of designating similar and even identical goods with the same intended purpose and use, and reiterated the example provided by OHIM to that effect: chutney.

In defending its applications, the applicant also argued that Masafi is the name of a village located on the edge of the Hajar Mountains, in the United Arab Emirates - a location that is allegedly famous for its mineral waters sources. Masafi also means 'pure water' in Arabic. Therefore, the applicant criticised OHIM for not concluding that the earlier word mark MASAFI enjoyed a low distinctive character, at least for the Arabic-speaking public in the United Kingdom. However, the court sided with the Board of Appeal, finding that 95% of the relevant public would not attribute any meaning to this word.

These two judgments confirm the existing practice at EU level in connection with the comparison of non-alcoholic beverages, juices and waters in Class 32 and the assessment of the relevant audience/territory in administrative proceedings before OHIM; they also follow the existing guidelines for the comparison of signs, focusing on the common and dominant elements of the marks in question.

Andreea Bende and Ana-Maria Baciu, Nestor Nestor Diculescu Kingston Petersen, Bucharest