OPPOSITION No B 2 587 973

Flensburger Brauerei Emil Petersen GmbH & Co. KG, Munketoft 12, 24937 Flensburg, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Birrificio Baladin Societa’ Semplice Agricola Siglabile Birrificio Baladin, S.S.Via Carru’ 23/A, 12060 Piozzo (Cuneo), Italy (applicant), represented by Interpatent, Via Caboto 35, 10129 Torino, Italy (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 587 973 is upheld for all the contested goods.

2.        European Union trade mark application No 14 485 817 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 485 817, namely against the goods in Class 32. The opposition is based on European Union trade mark registration No 10 669 307. 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 and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 32: Beers, mixed beverages containing beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

The contested goods are the following:

Class 32: Beer; Beer-based beverages.

Contested goods in Class 32

The contested beer; beer-based beverages are identically contained in the opponent’s list of goods, including synonyms.

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 relevant goods are beers or beverages containing beer, which are considered to be inexpensive goods for everyday consumption that are directed at the public at large. Therefore, the degree of attention would vary from below average to average.

3. The signs

PLOP
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier sign is a word mark, which consists of the word PLOP’ in upper case letters. The word has a meaning in the relevant territory and will be perceived as an onomatopoeic word that is related to the sound of an object falling into water without splashing.

The contested sign is a figurative mark consisting of a round label on a grey background that contains the word ‘POP’ in stylised bold black upper case letters. Each letter is surrounded by two white lines and two grey lines. Inside each letter, there are small circles containing two dark grey lines. These small circles are located in the upper right part of the letters P’ and at the bottom of the letter ‘O’. Surrounding the circular element, there are several figurative elements depicting, for example, a sun, a flower and a series of different-sized bubbles. The letter ‘O’ of the contested sign has the word ‘baladin’ inside it in stylised letters. The upper part of the circular element contains the verbal element ‘popular beer’ in significantly smaller upper case black letters and, in the lower part of the sign, there is the depiction of a glass of beer and the words ‘birra baladin’, which are superimposed on a geometrical figurative element.

The verbal element ‘POP’ is the dominant element the contested sign by virtue of its central position and size, as it overshadows the other figurative and verbal elements. The verbal element ‘POP’ is the dominant element of the contested sign and will be perceived by the Spanish-speaking part of the relevant public as referring to ‘a certain kind of popular music derived from black musical styles and British folk music’ or ‘an artistic movement of Anglo–American origin’ (information extracted from Real Academia Española at www.rae.es). Therefore, this element has no meaning in relation to the relevant goods and has an average degree of distinctiveness.

Moreover, the figurative elements of the contested sign are either purely decorative and ornamental or purely descriptive for the relevant goods (glass of beer and fizzy bubbles). The public will pay less attention to the ornamental elements.

In respect of the remaining verbal elements in the contested sign, different arguments can be cited. The word ‘POPULAR’, if perceptible, is a Spanish word meaning ‘Liked or known by many people’ (information extracted from Real Academia Española at www.rae.es) and will be perceived as laudatory for the relevant goods and is, therefore, weak. Moreover, the remaining verbal element, ‘BEER’, although it is an English word, will be understood by the relevant Spanish public because of its wide use and is, therefore, non-distinctive for the goods in question. The same arguments can be made regarding the small element situated at the bottom of the sign, depicting a glass of beer with the words ‘birra baladin’ inside it. In Spain, the word ‘birra’ is used colloquially to mean beer and is, therefore, purely descriptive.

However, the words ‘POPULAR BEER’ and ‘birra baladin’ are so small that they have a secondary role in the overall impression of the sign and may be overlooked by the average consumer

Visually, the signs coincide in the letters ‘P*OP’, which are the first letter and the last two letters of the earlier sign and form the most dominant verbal element of the contested sign. The signs differ in the letter, ‘L’, present in the earlier mark, and in the words ‘POPULAR BEER’, ‘birra baladin’ and the word ‘baladin’. Moreover, the signs differ in all the figurative elements of the contested sign.

It is important to note that, 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 view of the above and taking into account the dominant character of the word ‘POP’ and the size and the descriptiveness of the other words in the earlier mark, it is concluded that the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘P*OP’, present identically in both signs. The pronunciation differs in the sound of the letter ‘L’ of the earlier sign and the sound of the words ‘baladin’, ‘POPULAR BEER’ and ‘birra baladin’, present in the contested sign. It should also be remembered, as described above, that the verbal elements ‘POPULAR BEER’ and ‘birra baladin’ are unlikely to be pronounced because of their distinctiveness, size and position within the sign.

Therefore, bearing in mind the above, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the meanings of the marks, as well as the secondary role and ornamental nature of the figurative elements of the contested sign. As the signs will be associated with dissimilar meanings, they 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 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.

5. Global assessment, other arguments and conclusion

The goods are identical. The earlier sign has a normal degree of distinctiveness and the signs are visually similar to an average degree and aurally similar to a high degree. The signs are not conceptually similar.

When assessing the differences between the signs, it is important to note that the figurative elements of the contested sign are either descriptive of the relevant goods (those depicting bubbles or the glass of beer) or merely decorative (those depicting the sun, flowers or other decorative items). Moreover, the words ‘POPULAR BEER’ and ‘birra’ are descriptive of the goods in question and may be overlooked by the average consumer because of their small size.

The word ‘baladin’ is meaningless for the relevant part of the public and consumers may overlook it because of its size and position within the contested sign.

Therefore, the verbal element ‘POP’ is the most eye-catching element of the contested sign and is distinctive. For these reasons, the signs in dispute create similar impressions because all the letters of the contested sign’s dominant and distinctive element, ‘POP’, appear in the earlier mark, which has only one additional letter (the letter ‘L’). Such a small difference may easily go unnoticed by consumers, especially in oral communication.

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).

By analogy with other alcoholic beverages, such as wine, it is important to point out that the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.

The presence of the other words is clearly insufficient to counteract this overwhelming similarity, especially since the differences between the signs are in descriptive, almost illegible or ornamental elements.

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 10 669 307. 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

Richard BIANCHI

Alexandra APOSTOLAKIS

Ric WASLEY

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.