OPPOSITION No B 2 674 722

La Zaragozana S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Trompenburg Holdings B.V., Jonkheer Sixhof 21, 1241 CR Kortenhoef, Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 674 722 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 787 907, namely against all the goods in Class 32. The opposition is based on Spanish trade mark registration No 1 674 949. 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.

The contested goods are the following:

Class 32:         Beers; mineral waters; aerated waters; non-alcoholic beverages; fruit beverages; fruit juices; soft drinks; lemonades; syrups; preparations for making beverages.

Beers are identically contained in both lists of goods.

The contested mineral waters; aerated waters; non-alcoholic beverages; fruit beverages; fruit juices; soft drinks; lemonades have the same purpose as the opponent’s beers. These goods are offered side by side in the same shops and bars and even on drink menus, for instance. These goods may have the same producer, end user and distribution channels, they target the same public and, furthermore, they are in competition. Therefore, they are similar to a high degree.

The contested syrups; preparations for making beverages are ingredients used in preparing beverages, for example syrups. While the methods of use are different (i.e. the contested goods cannot be consumed straight away whereas the opponent’s beers are ready to drink), the goods may target the same public and they can have the same distribution channels. Therefore, these goods are similar to a low degree.

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 varying degrees are directed at the public at large and also at professionals working in the beverage industry (as is the case, for instance, for preparations for making beverages). They are inexpensive goods for daily consumption. The degree of attention is considered average.

3. The signs

AMBAR-GREEN	GREEN SPOT
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 element ‘GREEN’, present in both marks, will be meaningless for a part of the relevant public whereas for another part of the public with a basic knowledge of English it will be understood as the English word used to refer to this specific colour. In both cases, this element is distinctive as regards the relevant goods. However, a part of the public may also perceive this element as referring to organic or environmentally friendly products, since in the food market this colour relates, in general, to these types of products. Therefore, for this part of the relevant public, this element could be perceived as referring to a type of organic, environmentally friendly beers, drinks and preparations and thus as a less distinctive element in the signs.

The verbal element ‘AMBAR’ of the earlier mark exists as such in Spanish (i.e. ‘amber’ in English) and it is used to refer to, inter alia, a hard translucent fossilised resin typically yellowish in colour. As it is not directly descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The verbal element ‘SPOT’ has no meaning for the relevant public and, therefore, is also distinctive.

Contrary to the opponent’s claim, the signs have no elements that could be considered more dominant than other elements, as this factor cannot apply as regards word marks.

Visually, the signs coincide in the verbal element ‘GREEN’, which is the second element in the earlier mark and the first element in the contested sign. However, they differ in the first element in the earlier mark, ‘AMBAR’, and the second element of the contested sign, ‘SPOT’. The signs differ further in the hyphen placed between the two elements in the earlier mark.

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. In the present case, as seen above, the first elements of the conflicting signs are different.

Therefore, weighing up all these aspects, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters that form the element ‛GREEN’, present identically in both signs. The pronunciation differs in the sound of the letters ‘AMBAR’ of the earlier mark and ‘SPOT’ of the contested sign. The marks also differ aurally in their rhythm and intonation, as the coinciding element ‘GREEN’ is the second element in the earlier mark, but is placed at the beginning of the contested sign. Furthermore, the signs differ in their number of syllables, three the earlier mark (AM-BAR-GREEN) and two the contested sign (GREEN-SPOT).

Therefore, weighing up all these aspects, the signs are aurally similar to a low degree.

Conceptually, although the signs as a whole do not have any clear meaning for the public in the relevant territory, the element ‘AMBAR’ in the earlier mark will be associated with ‘amber’ (‘ámbar’ in Spanish), as defined above. The element ‘SPOT’ of the contested sign conveys no meaning for the relevant public.

By contrast, the word ‘GREEN’, which the signs have in common, will be either meaningless or understood as this particular colour or related to organic, environmentally friendly products.

For the part of the public that understands only the word ‘AMBAR’ of the earlier mark and does not attribute any meaning to the contested sign, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the other part of the public for which the element ‘GREEN’, included in both signs, might be associated with the colour or perceived as a reference to a type of organic, environmentally friendly goods, the signs coincide in a weak element, therefore and in consideration of the additional differing elements within the signs, they are conceptually 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.

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.

According to the opponent the verbal element ‘AMBAR’ contained within the opponent’s mark is well-known among the relevant public in Spain in connection with all the goods for which the opponent’s mark is registered, namely beers. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent asserts that ‘any consumer seeing the mark GREEN would assume that this is the name of a specific kind of beer, a sub-brand of AMBAR, the opponent’s house-mark for beers’ and submits the following evidence:

• Annex 1: copy of an extract from the opponent’s website www.ambar.com showing an image of a bottle of ‘AMBAR’ beer together with a text in Spanish and the heading ‘AMBAR GREEN CELIACOS – GLUTEN FREE’. This extract is undated;

• Annex 2: copies of some extracts from the opponent’s website www.ambar.com showing some images of bottles of beer together with a text in Spanish and the headings ‘AMBAR ESPECIAL’, ‘AMBAR EXPORT’, ‘AMBAR 1900’, ‘AMBAR RADLER’, ‘SPUTNIK’, ‘AMBAR NEGRA’, ‘MARLEN’, ‘AMBAR CAESARAUGUSTA’, ‘AMBAR 0,0’, ‘AMBAR LEMON’, ‘AMBAR MANZANA’, ‘AMBAR APTA PARA CELIACOS’, ‘AMBAR GREEN CELIACOS’. These extracts are undated.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use. The evidence submitted relates to copies of print-outs from the opponent’s own website showing use of the verbal element ‘AMBAR’ in conjunction with other elements, both verbal and figurative, in respect of the goods.

Only two of the extracts provided by the opponent show use of the trade mark ‘AMBAR GREEN’ (without the hyphen) but they are undated. Some photographs of bottles of beer showing the verbal element ‘AMBAR’ on the labels of those bottles are also included on page 2 of the opponent’s submissions. The trade mark ‘AMBAR GREEN’ (without the hyphen) is shown on one of those labels. The other bottles show labels with figurative and verbal elements, namely the following verbal elements can be identified: ‘AMBAR 1900’, ‘AMBAR EXPORT’, ‘AMBAR CAESAR AUGUSTA’ and ‘AMBAR’.

Taking into account the foregoing, the evidence submitted by the opponent does not provide any information regarding the degree of recognition or the repute in Spain of the opponent’s mark. The evidence only shows very minimal use, but no recognition. Therefore, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

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 the weak element ‘GREEN’ in the mark as stated above in section c) of this decision in relation to a part of the relevant public.

5. Global assessment, other arguments and conclusion

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements, and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The court has also held that 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 goods are identical or similar to varying degrees. The degree of attention is average.

The signs coincide visually, aurally and, for at least a part of the public, conceptually in the verbal element ‘GREEN’, although it is placed in different positions. This element is weak in relation to the relevant goods for the part of the public that understands this word.

The signs have significant differences, namely the earlier mark begins with the distinctive element ‘AMBAR’ followed by a hyphen and the contested sign includes the additional distinctive element ‘SPOT’. The differing elements in the signs are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

The opponent claims that the average consumer only rarely has the chance to make a direct comparison between the marks, but must place their trust in the imperfect picture of them kept in their mind. However, in the present case, considering the different elements of the signs under comparison, it would be reasonable not to expect that the contested sign could bring the earlier mark into consumers’ minds. They will not consider the contested sign to be a new or different version of the earlier mark.

The coincidence in only one component placed in different positions within the marks is not sufficient to lead to a likelihood of confusion on the part of the public. Therefore, the differences between the signs outweigh the similarities and, consequently, consumers with an average degree of attention will be able to safely distinguish between them. This is despite the fact that the goods are identical and similar to varying degrees.

The opponent asserts that the word ‘AMBAR’ is its house mark and that it frequently uses a sub-brand depending on the specific characteristics of each beer. Therefore, the generic mark ‘AMBAR’ also forms part of, inter alia, the various sub-brands ‘AMBAR 1900’, ‘AMBAR ESPECIAL’, ‘AMBAR EXPORT’, ‘AMBAR CAESAR AUGUSTA’, ‘AMBAR NEGRA’, ‘AMBAR MANSANA’, ‘AMBAR LEMON’ and ‘AMBAR PREMIUM’. Such frequent use of a second verbal element qualifying the mark ‘AMBAR’ supports the notion that the relevant public will understand the word ‘AMBAR’ as being the principal element permitting recognition of the mark and the word ‘GREEN’ as a type of beer under the ‘AMBAR’ mark. However, the opponent’s argument is not supported with any evidence that would show how consumers perceive the contested sign and/or the word ‘AMBAR’, for the Office to reach a different finding. Therefore, this argument must be set aside.

The opponent refers to previous decisions of the Office to support its arguments. However, 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.

The Opposition Division considers that the previous cases referred to by the opponent are not relevant to the present proceedings.

The following cases were cited in the opponent’s submissions: Decision No 166/2003 of 29/01/2003 in relation to opposition No B 341 216 ‘PIRCHER WILLIAMS v WILLIAM’, Decision of the Second Board of Appeal of 20/05/2011 in Case R 902/2010-2, ‘EL CORTE INGLÉS FORMULA JOVEN v FORMULA’ and decision of 23/02/2010 ruling on opposition No B 1 467 267, ‘CELLULIGHT v ELMIPLANT CELLULIGHT’. These cases can be distinguished from the current case, since the above earlier cases relate to a comparison between a contested application which consists solely of one verbal element contained in its entirety (with the inclusion of a final letter ‘S’ in the case of ‘WILLIAMS’) in the opponent’s mark, or vice versa. The current case relates to a contested mark which consists of two separate verbal elements – only one of which is contained within the opponent’s mark, which itself consists of two verbal elements joined by a hyphen.

Further, in the case of Decision of 22/02/2010 ruling on opposition No B 1 153 701, ‘FERRERO GARDEN v GARDEN’, the contested sign in that case contained only one verbal element and furthermore it was a figurative mark. Therefore, that case can also be distinguished from the current case.

Finally, the decision of 18/05/2010, B 1 479 932, ‘AMBAR EXPORT v EXPORT’, can be distinguished from the present case given that the former decision relates to a comparison of two signs that both contain figurative elements. Therefore, the situation is not comparable to the present case.

Considering all the above, even considering that the goods are identical and similar to varying degrees, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Ric WASLEY

Marta GARCÍA COLLADO

Vanessa PAGE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.