OPPOSITION No B 2 698 648

Font Salem Portugal S.A., Quinta da Mafarra, P- Várzea, Santarém, Portugal (opponent), represented by Despacho Gonzalez-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Brauerei Gusswerk GmbH, Römerstrasse 3, A-5322 Hof bei Salzburg, Austria (applicant), represented by Kliment & Henhapel Patentanwälte Og, Singerstr. 8, A-1010 Wien, Austria (professional representative).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 698 648 is upheld for all the contested goods.

2.        European Union trade mark application No 15 083 744 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 083 744. The opposition is based on European Union trade mark registration No 11 553 881. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 32:        Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages; lithia water; seltzer water; waters [beverages]; table waters; aerated water; preparations for making aerated water; mineral water [beverages]; preparations for making mineral water; aperitifs, non-alcoholic; whey beverages; aloe vera drinks, non-alcoholic; non-alcoholic fruit juice beverages; powders for effervescing beverages; isotonic beverages; preparations for making beverages; non-alcoholic beverages; non-alcoholic honey-based beverages; beers; beer wort; cider, non-alcoholic; cocktails, non-alcoholic; essences for making beverages; non-alcoholic fruit extracts; orgeat; ginger ale; fruit juice; vegetable juices [beverages]; kvass [non-alcoholic beverage]; milk of almonds [beverage]; peanut milk [non-alcoholic beverage]; preparations for making liqueurs; smoothies; lemonades; syrups for lemonade; extracts of hops for making beer; malt beer; malt wort; must; fruit nectars, non-alcoholic; pastilles for effervescing beverages; soda water; syrups for beverages; sorbets [beverages]; tomato juice [beverage]; grape must, unfermented; sarsaparilla [non-alcoholic beverage].

The contested goods are the following:

Class 30:        Beer vinegar.

Class 32:        Beer; beer wort; imitation beer; beer-based cocktails; lagers; non-alcoholic beer; flavored beers; beer and brewery products; coffee-flavored beer; beer-based beverages; low alcohol beer; beers enriched with minerals; non-alcoholic beer flavored beverages; black beer [toasted-malt beer].

Class 33:        Alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based; alcoholic carbonated beverages, except beer; brandy; digesters [liqueurs and spirits].

        

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 30

The contested beer vinegar and the opponent’s beer in Class 32, coincide in nature, as the beer vinegar is made from beer and furthermore they also coincide in relevant public. They must be seen as similar to a low degree.  

Contested goods in Class 32

Beer (listed twice in the contested list of goods) and beer wort are identically contained in both lists of goods.

The contested non-alcoholic beer; non-alcoholic beer flavored beverages are included in the broader category of the opponent’s non-alcoholic beverages [other than mineral and aerated waters]. Therefore, they are identical.

 

The contested beer-based cocktails; lagers; flavored beers; coffee-flavored beer; beer-based beverages; low alcohol beer; beers enriched with minerals; black beer [toasted-malt beer] are included in, or overlap with, the broader category of the opponent’s beers. Therefore, they are identical.

The contested brewery products include, as a broader category the opponent’s beers. 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 imitation beer is highly similar to the opponent’s beers. These goods coincide in purpose; they are distributed through the same channels, target the same relevant public and are manufactured by the same companies. Moreover, they are in competition.

Contested goods in Class 33

The contested alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based; alcoholic carbonated beverages, except beer are similar to the opponent’s beers. 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 section of supermarkets, although they can also be distinguished to some extent by subcategory. Beers and alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings.

The contested brandy; digesters [liqueurs and spirits] and the opponent’s beers are also similar, since even if these goods do not have the same manufactures they will still coincide in nature, distribution channels and target the same relevant public.

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 or similar to various degrees are directed at the public at large.

The degree of attention is average.

3. The signs

CINTRA	CITRA BEACH
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark and the contested sign’s first element are not meaningful in certain territories and their phonetic similarities are furthermore stronger in some territories than others. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public such as Spain, where these elements are fanciful and will be pronounced in a similar way.

The earlier mark is the word mark ‘CINTRA’ which has no meaning in the relevant territory and therefore has an average degree of distinctiveness in relation to the relevant goods.

The contested sign is a word mark comprised of the elements ‘CITRA’ and ‘BEACH’. The element ‘CITRA’ is meaningless in the relevant territory and in relation to the goods in question this element has an average degree of distinctiveness. It can be mentioned that ‘CITRA’ is a Latin prefix meaning ‘on this side on…’, however it is first of all questionable that the average consumer will know this meaning of the word and secondly, in the sign, the element is not presented as a prefix. Therefore, it can be reasonably assumed, that the word ‘CITRA’ will be perceived as fanciful. The element ‘BEACH’ is a very basic English word, which will also be understood in the relevant territory, as meaning an area of sand or stones beside the sea (Collins dictionary). As the relevant goods are often associated with summer, good weather and the beach, this element will not have a big impact on the overall impression of the mark, and thus its distinctiveness is below average.

Therefore, ‘CITRA’ must be seen as the most distinctive element of the contested sign. The contested sign has no elements that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the letters ‘CI*TRA’ making up four letters out of five of the earlier mark and the entire first element of the contested sign, which is also the most distinctive element of the sign. The signs differ in the letter ‘**N***’ in the earlier mark and the second element ‘BEACH’ in the contested sign, the latter though having a lower than average degree of distinctiveness.

Therefore, and taking into consideration the importance of the beginning of the sign, the signs are visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘BEACH’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 has no meaning for any of the goods in question from the perspective of the public at large in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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, the degree of similarity between the marks and between the goods or services identified (recital 8 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar to various degrees. The distinctiveness of the earlier mark is normal and the relevant public’s degree of attention is average.

Taking the above into consideration, although the signs differ in some elements, they almost coincide in the only element of the earlier mark and the whole first element of the contested sign. Taking into account the consumer’s imperfect recollection, the importance of the beginning of the signs and the lower distinctiveness of the additional element ‘BEACH’, the difference between the signs resulting from the fact that, in the earlier mark, the letter ‘N’ is added in the middle of the word, is not sufficient to outweigh the similarities between the signs. Taking the interdependence principle into consideration, this also applies to the contested goods found to be similar to a low degree with the opponent’s.

In addition, the Opposition Division notes that the likelihood of confusion includes likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present case, consumers may easily conclude that the goods labelled with the contested sign come from the same undertaking or economically linked undertakings as those labelled with the earlier mark and that they are all being offered under the ‘CI(N)TRA’ brand. For example, the public may think that the contested sign, ‘CITRA BEACH’, denotes a product line that is meant to be enjoyed on warm summer days at the beach.

The applicant refers to previous decisions of the Office, as well as previous decisions from Board of Appeal to support its arguments. However, in regards to the decisions of the Office, it can be noted that 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 cases referred to by the applicant are not relevant to the present proceedings, as the signs compared in those decisions are very different from the ones in question which is also the case for the Board of Appeal decisions referred to by the applicant.

Considering all the above, there is a likelihood of confusion on the part of the 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 11 553 881. It follows that the contested trade mark must be rejected for all the contested goods.

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.

The Opposition Division

José Antonio GARRIDO OTAOLA

Cecilie Leth BOCKHOFF

Michele M. BENEDETTI-ALOISI

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.