OPPOSITION No B 2 499 385

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eva Schiller, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Cervecera Artesana del Duero, S.L., Camino del Chorrillo, s/n, 47318 Olmos de Peñafiel Valladolid, Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 499 385 is upheld for all the contested goods.

2.        European Union trade mark application No 13 743 844 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 350. 

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 743 844. The opposition is based on inter alia, European Union trade mark registration No 9 512 609. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 512 609.

1. The goods

The goods on which the opposition is based are, among others, the following:

Class 32: Beer.

The contested goods are the following:

Class 32: Beer.

Beer is identically contained in both lists of goods.

2. 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 at least average.

3. The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘real’ is meaningful in certain territories, for example, in Portugal and Spain, where it is understood as ‘actually existing as a thing or occurring in fact; not imagined or supposed; not imitation or artificial’ and also as ‘having the status of a king or queen or a member of their family; of a quality or size suitable for a king or queen; splendid’ (https://en.oxforddictionaries.com/). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese- and Spanish- speaking part of the public.

In the present case, the identification of the dominant or negligible elements in the signs is paramount (16/01/2015, R 208/2014-2 – ‘LA REAL DEL DUERO, LA CERVEZA DE LA RIBERA (FIG. MARK) / REAL et al.’ § 27).

The earlier mark is figurative and features the word ‘real’ written in lower case red italics characters followed by a figurative element composed of two blue strokes recalling a comma and a hyphen.

The contested sign is figurative and includes several verbal elements in different fonts, sizes and positions. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, the phrases ‘LA CERVEZA DE LA RIBERA’ and to some extent ‘CERVEZA ARTESANA’ are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The contested sign consists of a black circle framed by two grey inner circles. Inside the circle, the words ‘LA REAL’ and ‘DEL DUERO’ are written in a standard white upper case typeface except the letter ‘R’ in the first phrase, which is much bigger than the rest of the letters. The sign also depicts an orange crown on top of the letter ‘R’, some leaves and wheat or barley ears and two black lines.

The verbal element ‘real’ in the earlier mark is the dominant element as it is the most eye-catching.

In the contested sign, the verbal element ‘LA REAL’ and particularly the letter ‘R’ with the crown clearly stand out due to their size compared to the other elements of the sign (the latter also because it is depicted in a different colour than the rest of the sign), and constitute the dominant elements (16/01/2015, R 208/2014-2 – ‘LA REAL DEL DUERO, LA CERVEZA DE LA RIBERA (FIG. MARK) / REAL et al.’ § 30).

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).

In conclusion, the verbal elements ‘real/REAL’ are the most dominant elements in each sign.

The common element ‘real’ will be associated with ‘splendid’ in Portuguese and Spanish and therefore, is less distinctive for goods as it is allusive of their allegedly quality. In the contested sign, the figurative element of a crown reinforces the meaning associated with ‘splendid’. As it could be associated with a higher quality of goods, it is not distinctive.

The element ‘DEL DUERO’ of the contested sign will be associated with the name of the river flowing from Spain into Portugal (Douro in Portuguese). Bearing in mind that the relevant goods are beers, this element is non-distinctive for these goods as it is descriptive of their place of production.

The figurative element of some leaves and wheat ears in the contested sign will be associated with the ingredient of the relevant bear and therefore, is weak for these goods.

Visually, the signs coincide in the element ‘REAL’, which constitutes the earlier mark’s only verbal element. The signs differ in the numerous verbal and figurative components of the contested sign as described above and in the figurative element of the earlier mark which have no counterparts in the other sign. However, even if the figurative elements are not negligible, for instance in terms of their colour, they are likely to be perceived by the relevant public as essentially decorative elements and not as indicating the commercial origin of the goods concerned (15.12.2009, T-412/08, Trubion,_EU:T:2009:507, § 45).

Taking into account the limited impact of the figurative elements in the signs and bearing in mind that the verbal elements ‘real/REAL’ constitute their dominant elements, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters
‛r-e-a-l’, present identically in both signs. Notwithstanding their differences in length, the contested sign fully reproduces the earlier mark’s only word element. Moreover, relevant consumers will tend not to pronounce the word elements ‘DEL DUERO’, in view of the fact that only dominant elements will be pronounced. (16/01/2015, R 208/2014-2 – ‘LA REAL DEL DUERO, LA CERVEZA DE LA RIBERA (FIG. MARK) / REAL et al.’ § 33). Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning to the extent that they coincide in the term ‘REAL’, the signs are conceptually similar to an average degree.

4. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

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5. 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).

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 goods are identical and they target the public at large whose degree of attention is at least average. Furthermore, the earlier mark overall has a normal degree of distinctiveness.

The signs under comparison are visually and conceptually similar to an average degree, and aurally highly similar.

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 (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T 6/01, Matratzen, EU:T:2002:261, § 30; 12/07/2006, T 97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T 34/04, Turkish Power, EU:T:2005:248, § 43).

When one of the conflicting trade marks or a part thereof is reproduced in the other mark, the signs will be found similar, and this, together with other factors, may lead to a likelihood of confusion. The signs have in common the only verbal element in the earlier mark which is the most dominant element in both signs.

In the light of all the foregoing considerations, also taking into account the notion of imperfect recollection, the Opposition Division concludes that the differences between the signs in question, even though they will not go unnoticed by the relevant public, are not sufficient to rule out a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the Portuguese- and Spanish- 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 512 609. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 9 512 609 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Fabian GARCIA

Loreto URRACA LUQUE

Ewelina SLIWINSKA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be 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 Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.