OPPOSITION DIVISION
OPPOSITION No B 2 791 062
Pivo Invest BG AD, 105-107 General Gurko str., 5000 Veliko Turnovo, Bulgaria
(opponent), represented by Iliana Marinova, 6 Trapezitsa Str, Fl.1, Office 4, 1000
Sofia, Bulgaria (professional representative)
a g a i n s t
Lackmann Fleisch- und Feinkostfabrik GmbH, Erlenstr. 23, 77815 Bühl, Germany
(applicant), represented by LSH Rechtsanwälte, Schlossberg 20, Stadtbau-
Gebäude, 75175 Pforzheim, Germany (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 791 062 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 596 761 for the figurative mark , namely
against all the goods in Classes 32 and 33. The opposition is based on Bulgarian
trade mark registration No 83 320 for the word mark ‘БАЛКАНСКО’ and Bulgarian
trade mark registration No 86 522 for the figurative 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
Decision on Opposition No B 2 791 062 page: 2 of 8
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 and services
The goods and services on which the opposition is based are the following:
Bulgarian trade mark registration No 83 320
Class 32: Beer.
Class 43: Restaurants; beer-houses; cafe services; fast-food restaurants.
Bulgarian trade mark registration No 86 522
Class 32: Beer; beer wort; extracts of hops for making beer.
Class 40: Brewing of beer.
Class 43: Restaurants; beer-houses; day bars; cafe services; catering;
temporary accommodation.
The contested goods are the following:
Class 32: Beer and brewery products; Non-alcoholic beverages; Preparations
for making beverages.
Class 33: Alcoholic 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 in Class 32
The contested beer is identically contained in the opponent’s lists of goods.
The contested brewery products include, as a broader category, the opponent’s beer;
beer wort. Since the Opposition Division cannot dissect ex officio the broad category
of the contested goods, they are considered identical to the opponent’s goods.
The contested preparations for making beverages include, as a broader category, the
opponent’s extracts of hops for making beer. Since the Opposition Division cannot
dissect ex officio the broad category of the contested goods, they are considered
identical to the opponent’s goods.
The contested non-alcoholic beverages and the opponent’s beer have the same
general purpose, that of quenching thirst, and the same producers, distribution
channels and relevant public. Furthermore, they are in competition. Therefore, these
goods are highly similar.
Decision on Opposition No B 2 791 062 page: 3 of 8
Contested goods in Class 33
The contested alcoholic beverages have some points in common with the opponent’s
beer. Although their production processes are different, these goods all belong to the
same category of alcoholic drinks intended for the general public. They can be
served in restaurants and in bars and are on sale in supermarkets and grocery
stores. These drinks can be found in the same sections of supermarkets, although
they can also be distinguished to some extent by subcategory. Beers and alcoholic
beverages can originate from the same undertakings. Therefore, the goods under
comparison are similar.
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 varying degrees)
are directed at the public at large, whose degree of attention is average.
c) The signs
БАЛКАНСКО
1) Bulgarian trade mark No 83 320
2) Bulgarian trade mark No 86 522
Earlier trade marks Contested sign
The relevant territory is Bulgaria.
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).
Two marks are similar when, from the point of view of the relevant public, they are at
least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01,
Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). The elements in
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common must therefore be ‘relevant’ from the perspective of the consumer, who
usually perceives a mark as a whole and does not analyse its various details
(13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).
The contested sign is a figurative mark, consisting of the word ‘БАЛКАНИКА’ in
rather standard Cyrillic letters.
Earlier mark 1) is a word mark, consisting of the word ‘БАЛКАНСКО’ in Cyrillic
characters. In the case of word marks, the word as such is protected, not its written
form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper
case letters, or in a combination thereof.
Earlier mark 2) is a figurative mark, depicting a square label with an oval shape in the
centre in red, gold, black and white. In the centre of the label is the word
‘БАЛКАНСКО’, depicted in slightly stylised black upper case Cyrillic letters, placed
inside an irregular horizontal white shape. There are various other verbal and
figurative elements in the mark, which are non-distinctive or weak and/or perform a
secondary and decorative function due to their size and position in the complex sign:
indications in several languages of the nature of the product, namely beer; the
indication ‘ВЕКОВНА ПИВОВАРНА ТРАДИЦИЯ’, meaning ‘century-old brewery
tradition’ in Bulgarian; the indication ‘1892’, which is likely to be perceived as the year
of founding/first operation of the company behind the goods; the Cyrillic letter ‘Б’
surrounded by wheat stems, which is, however, relatively small in comparison with
the central element ‘БАЛКАНСКО’; and parts of the words ‘БАЛКАНСКО’ and
‘BALKANSKO’ (the Latin transliteration of the former word), which form the
background of the sign. All these form parts of a complex label with numerous
elements that are likely to be paid less attention or completely disregarded by the
relevant public because of their limited distinctiveness, small size or decorative
function.
Moreover, with regard to the figurative elements in the sign, 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).
Consequently, the visually dominant and eye-catching element in earlier mark 2) is
the word ‘БАЛКАНСКО’, depicted inside an irregular white shape in a central position
in the mark.
This verbal element, ‘БАЛКАНСКО’, constituting earlier mark 1) and the most
prominent element of earlier mark 2), is a Bulgarian adjective in neuter form, deriving
from the noun ‘БАЛКАН’ (transliterated as ‘BALKAN’) and denoting, or relating to, the
Balkan States or their inhabitants, the Balkan Peninsula or the Balkan Mountains. As
such, contrary to the opponent’s assertions, this word is of rather limited
distinctiveness in relation to the relevant goods in Class 32, as it is likely to be
perceived by the relevant Bulgarian public as an indication of the geographical origin
of the goods, namely that they derive from the Balkan Peninsula or the Balkan
States. Consequently, the impact of this weak element of the earlier marks is limited
in the comparison of the marks at issue.
The verbal element ‘БАЛКАНИКА’ (transliterated in Latin characters as
‘BALKANIKA’), constituting the contested sign, may be perceived by the relevant
Bulgarian public as deriving from ‘БАЛКАН’ (‘BALKAN’) and as alluding to the Balkan
Decision on Opposition No B 2 791 062 page: 5 of 8
Peninsula, the Balkan Mountains or mountains in general. Nevertheless, the word
‘БАЛКАНИКА’ as a whole does not exist in common parlance and will be perceived
by the relevant public as a distinctive and fanciful term with no straightforward
meaning. Therefore, it is of average distinctiveness in relation to the relevant goods
in Classes 32 and 33.
Consequently, conceptually there is a certain link between the signs due to the
presence of the concept of ‘Balkan’/‘the Balkans’ in the marks under comparison.
However, bearing in mind the limited distinctiveness of this concept and the fact that
the earlier marks’ verbal element ‘БАЛКАНСКО’ is an existing adjective with a clear
concept, whereas the contested sign’s ‘БАЛКАНИКА’ is an invented word, which is
fanciful as a whole, the signs are at most conceptually similar to a low degree.
Visually, the signs coincide in the sequence of letters ‘БАЛКАН*К*’ and differ in the
remaining letters in the verbal elements ‘БАЛКАНСКО’ in the earlier marks, namely
‘С’ and ‘О’, and ‘БАЛКАНИКА’ in the contested sign, namely ‘И’ and ‘А’. They also
differ in the stylisation of the contested sign, which is minor, and in the additional
verbal and figurative elements of earlier mark 2), which have a limited impact on the
comparison of the signs, as explained above.
It should be recalled that, although the beginning of a sign generally has more
importance than the ending in the overall impression produced by that sign, this
consideration cannot prevail in all cases and cannot, in any event, undermine the
principle that an examination of the similarity of the signs must take account of the
overall impression produced by those signs, taking into account their distinctive
elements.
In the present case, although the marks under comparison coincide in the beginnings
of the words ‘БАЛКАНСКО’ and ‘БАЛКАНИКА’, it should be borne in mind that the
word ‘БАЛКАНСКО’ in the earlier marks is not particularly distinctive and has a
limited impact when assessing the similarity between the marks.
The differences at the end of the elements ‘БАЛКАНСКО’ and ‘БАЛКАНИКА’ will
differentiate the signs visually, as they will be noticed by the relevant consumers, who
will continue to read the signs in their entirety and not stop at the weak coinciding
beginning ‘БАЛКАН’ of the marks.
The additional elements of earlier mark 2), although of limited distinctiveness and/or
visual impact, will also differentiate this mark visually to some extent.
Therefore, taking into account all the relevant factors, it is considered that the signs
under comparison are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the syllable ‘БАЛ’
(pronounced as ‘BAL’), present identically in all the signs, and partly in their second
syllables, ‘КАН’ (pronounced as ‘KAN’) in the earlier marks and ‘КА’ (pronounced as
‘KA’) in the contested sign; the pronunciation differs in the sounds of the last syllables
of the marks, ‘СКО’ (pronounced as ‘SKO’) in the earlier marks and ‘НИ-КА’
(pronounced as ‘NI-KA’) in the contested sign.
The additional verbal elements in earlier mark 2) will most likely not be pronounced
due to their size, position and, in some cases, limited distinctiveness, as well as the
complexity of the sign. Consequently, earlier mark 2) is likely to be referred to orally
as ‘BALKANSKO’, because of the size and central position of the word
Decision on Opposition No B 2 791 062 page: 6 of 8
‘БАЛКАНСКО’, regardless of the fact that it will be perceived to be of limited
distinctiveness by the relevant public.
However, the aurally identical or similar beginnings of the marks, ‘БАЛ-КА(Н)’
(pronounced as ‘BAL-KA(N)’), are not particularly distinctive in relation to the relevant
goods, and the additional aural differences between the signs are clearly perceptible.
The presence of the differing sounds at the ends of the marks’ verbal elements
changes the division of the syllables of the common sounds ‘BALKAN*K*’ in them, as
the earlier marks will be pronounced in three syllables, ‘BAL-KAN-SKO’, whereas the
contested mark will be divided into four syllables, ‘BAL-KA-NI-KA’.
Therefore, bearing in mind the limited distinctiveness of the coinciding component in
relation to the relevant goods, it is considered that the signs are aurally similar to a
low degree.
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 marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by
virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on
their distinctiveness per se.
Considering what has been stated above in section c) of this decision, the
distinctiveness of the earlier marks must be seen as low for all the goods in question,
due to the limited distinctiveness of the element ‘БАЛКАНСКО’.
The additional elements of earlier mark 2) will most likely be disregarded by the
public, as they are either non-distinctive or purely ornamental. Therefore, since the
public will not perceive these elements as indicators of commercial origin, the overall
inherent distinctiveness of this mark is also considered low, due to the limited
distinctiveness of its essential business identifier, ‘БАЛКАНСКО’.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, and the degree
of similarity between the marks and between the goods or services identified
(recital 11 of the EUTMR). It must be appreciated globally, taking into account all
factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528,
§ 22).
As seen above, the goods are identical or similar (to varying degrees).
Decision on Opposition No B 2 791 062 page: 7 of 8
The signs are visually, aurally and conceptually similar to a low degree on account of
the letter sequence that they have in common, ‘БАЛКАН*К*’. However, the visual,
aural and conceptual commonalities between the signs are based on elements that
will be perceived by the relevant public as inherently weak in relation to the goods at
issue. As stated above, the relevant public will pay less attention to the elements of
the marks that are weak or devoid of distinctive character, and the differences
between the signs therefore have to be attributed more importance in the overall
assessment of the signs.
In the present case, as pointed out by the opponent, the word ‘БАЛКАНСКО’ of the
earlier marks is a Bulgarian adjective meaning ‘of the Balkans’. Consequently, as
explained above, the earlier marks are inherently weak as a whole and therefore
have a reduced scope of protection against later similar signs.
Considering all of the above and the overall impressions conveyed by the signs,
bearing in mind, in particular, their distinctive and dominant components, the
noticeable differences between the marks will enable the relevant consumers to
safely distinguish between them, even though some of the goods are identical and
the degree of attention of the relevant public may not be more than average.
Consequently, there is no likelihood of confusion on the part of the public. Therefore,
the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Gueorgui IVANOV Boyana NAYDENOVA Christian RUUD
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
Decision on Opposition No B 2 791 062 page: 8 of 8
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.