OPPOSITION DIVISION
OPPOSITION No B 2 817 149
Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany
(opponent), represented by Otto (GmbH & Co KG), Nicola Franzky, Werner-Otto-
Straße 1-7, 22179 Hamburg, Germany (employee representative)
a g a i n s t
DS Concepts LTD, Agiou Prokopiou 13 Street, P.O Box 53309, 2406 Egkomi
Lefkosia, Cyprus (applicant), represented by I.A. Anastassiadis & Associates Law
Offices, 92 Solonos str., 106 80 Athens, Greece (professional representative).
On 15/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 817 149 is upheld for all the contested goods.
2. European Union trade mark application No 15 790 363 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 320.
PRELIMINARY REMARK
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods of European Union trade mark
application No 15 790 363 for the word mark OTTO’S ATHENS VERMOUTH, namely
against all the goods in Class 33. The opposition is based on European Union trade
mark registration No 13 713 151 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 2 817 149 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 services on which the opposition is based are the following:
Class 35: Wholesaling and retailing of alcoholic beverages (except beers).
The contested goods are the following:
Class 33: Alcoholic beverages (except beer).
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR,
goods or services are not regarded as being similar or dissimilar to each other on the
ground that they appear in the same or different classes under the Nice
Classification.
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.
As regards the comments of the applicant on the specific use of the marks, it is worth
mentioning that the comparison must be based on the goods and services as
registered. Any actual or intended use not stipulated in the list of goods/services is
not relevant for the comparison since this comparison is part of the assessment of
likelihood of confusion in relation to the goods/services on which the opposition is
based and directed against; it is not an assessment of actual confusion or
infringement (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71).
Retail services concerning the sale of particular goods are similar to a low degree to
those particular goods. Although the nature, purpose and method of use of these
goods and services are not the same, they have some similarities, as they are
complementary and the services are generally offered in the same places where the
goods are offered for sale. Furthermore, they target the same public.
The same applies to wholesale services which are services rendered in connection
with other types of services that consist exclusively of activities revolving around the
actual sale of goods.
Therefore, the contested alcoholic beverages (except beer) are similar to a low
degree to the opponent’s wholesaling and retailing of alcoholic beverages (except
beers).
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.
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In the present case, the goods and services found to be similar to a low degree are
directed at the public at large.
The degree of attention is average.
The applicant claims that the contested goods target consumers with a higher level of
attention. However, the relevant consumer and degree of attention must be assessed
with a view to the goods as registered not those for which the contested mark is or
may be used.
It is settled case-law that, firstly, the goods alcoholic beverages (except beers) are for
everyday consumption and are normally widely distributed, ranging from the food
section of supermarkets, department stores and other retail outlets to restaurants and
cafés and that, secondly, the consumer of alcohol is a member of the general public,
who will demonstrate an average level of attention when purchasing such goods
(see, to that effect, judgments of the General Court of 19/01/2017, T-701/15,
LUBELSCA (fig.), § 22 and the case-law cited therein).
c) The signs
OTTO’S ATHENS VERMOUTH
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 common element ‘OTTO’ is meaningful in certain territories, for example in those
countries where German is understood. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on the German-speaking part of the
public, such as in Germany and Austria.
The earlier sign consists of the verbal element ‘OTTO’ depicted in red bold font. The
graphic stylization is only secondary because the colour will be perceived as mere
decoration and the font is relatively standard. The verbal element ‘OTTO’ will be
understood by the relevant public as a common male name (see definition at
Decision on Opposition No B 2 817 149 page: 4 of 8
www.duden.de/rechtschreibung/Otto_maennlicher_Vorname). As it is not descriptive
or otherwise weak for the relevant services, the term ‘OTTO’ is distinctive.
The same applies to the element ‘OTTO’S’ of the contested sign in relation to the
contested goods. The additional apostrophe and the letter ‘S’ will be perceived as the
English genitive marker, thus merely indicating the possessive form of the same male
name ‘OTTO’. Even those German-speaking consumers who are not sufficiently
familiar with English grammar, will still perceive ‘OTTO’S’ as the genitive form of
‘OTTO’. They know the name and the genitive form in German would be the same
except for the apostrophe (‘OTTOS’). Aurally, the genitive forms in English and
German are the same as the apostrophe is not pronounced. Therefore, the element
‘OTTO’S’ of the contested sign is distinctive.
The element “VERMOUTH” of the contested sign is the English term for a strong
alcoholic drink made from red or white wine flavoured with herbs (see
www.collinsdictionary.com/dictionary/english/vermouth). In relation to the goods at
issue, alcoholic beverages (except beers), consumers will perceive this element as a
mere indication of one of the characteristics of these goods, namely that they are or
contain vermouth. Even the German-speaking public that does not know the English
term “vermouth” will easily understand its meaning as the corresponding term in
German, namely “Wermut” (www.duden.de/rechtschreibung/Wermut), is very similar,
in particular from a phonetic point of view.
In German the element ‘ATHENS’ of the contested sign is the genitive form of the
word ‘ATHEN’, the name for the capital of Greece
(www.duden.de/rechtschreibung/Athen). Alternatively, German consumers may also
perceive ‘ATHENS’ as the English equivalent for ‘ATHEN’ (see
www.collinsdictionary.com/dictionary/english/athens). Either way, this element will be
perceived as indicating a characteristic of the relevant goods, namely their
geographical origin.
Taken as a whole, the elements ‘ATHENS VERMOUTH’ of the contested sign
immediately inform the consumer that the products at issue are vermouth or other
alcoholic beverages containing vermouth made in Athens. As such these elements
are descriptive and non-distinctive.
The earlier mark has no element that could be considered clearly more dominant
than other elements.
Visually, the signs coincide in their distinctive element ‘OTTO’. However, the signs
differ in the graphic stylization of that element in the earlier sign and the additional
apostrophe, the letter ‘S’ and the elements ‘ATHENS VERMOUTH’ in the contested
sign.
In this regard, it is worth noting that the contested sign is a word mark that seeks
protection for the words as such and not for a particular portrayal of the same.
Consequently, the specific use of the contested sign that the applicant refers to and
gives examples of in the form of labels used is irrelevant for the purpose of assessing
the visual similarity of the signs.
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.
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As the signs share the same beginning and the differences only concern non-
distinctive elements at the end of the contested sign, the signs are visually highly
similar.
Aurally, the pronunciation of the element ‘OTTO’ at the beginning of the contested
sign coincides with the pronunciation of the earlier sign.
For the reasons mentioned above, the Opposition Division considers that the
additional apostrophe (which is not even pronounced) and ‘S’ in the contested sign
are barely noticeable and, as such, cannot create a significant aural difference
between the signs. The same applies to the elements ‘ATHENS VERMOUTH’.
Overall, the strong similarities prevail as they arise from the distinctive element at the
beginning of the signs where consumers focus their attention.
Therefore, the signs are aurally highly similar.
Conceptually, the signs are similar to the extent that the common element ‘OTTO’
evokes the same male name in both signs with the slight difference that the
contested sign indicates its possessive form. The concept conveyed by the elements
‘ATHENS VERMOUTH’ is descriptive and non-distinctive and can therefore not
create any significant differences between the signs.
The Opposition Division agrees with the opponent that the average consumer of the
relevant goods and services cannot be assumed to know King Otto of Greece or be
familiar with an ancient Greek tradition of wine production promoted by that particular
king. Even if the German-speaking public were familiar with these historical details,
the signs would still be conceptually similar as the consumer would then associate
the element ‘OTTO’ in both marks with that same concept in relation to the relevant
goods and services which are or concern alcoholic beverages.
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 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, from the perspective of the German-
speaking public in the relevant territory the earlier trade mark as a whole has no
meaning for any of the services in question. Therefore, the distinctiveness of the
earlier mark must be seen as normal.
e) 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).
Decision on Opposition No B 2 817 149 page: 6 of 8
The goods and services at issue have been found to be similar to a low degree.
However, this lower degree of similarity is compensated by the high degree of visual
and aural similarity of the signs. In addition, for the German-speaking public the signs
are also conceptually similar.
The contested goods are directed at the general public who will demonstrate an
average level of attention when purchasing those goods.
There is a likelihood of confusion because the differences between the signs are
confined to non-distinctive or secondary elements and aspects.
It should also 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 – which in the present case is high – 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 its observations, the applicant argues that it has already used a stylized version of
the mark applied for in relation to vermouth in the UK, France, Greece, Germany,
Cyprus, Italy and Belgium. In this context, the applicant highlights that i) its brand
already has a strong advertising and promotional presence in online and offline
media, ii) it has received a highly acclaimed alcoholic beverage business award in
2017 and iii) sales of 300 000 bottles were achieved under that mark in only six
months. The applicant also highlights that, despite such use, no incident of confusion
with regard to the opponent’s earlier mark has been recorded so far and that the
opponent also failed to submit any evidence to substantiate its claim.
In this regard it is worth highlighting that likelihood of confusion means a probability
of confusion on the part of the relevant consumer and does not require actual
confusion. As expressly confirmed by the Court: ‘… it is not necessary to establish
the existence of actual confusion, but the existence of a likelihood of confusion’
(judgment of 24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69).
Accordingly, the opponent is not required to submit any proof of actual incidents of
confusion.
Inasmuch as the applicant claimed that the conflicting marks have already been
coexisting in some Member States, the Opposition Division considers that the
arguments brought forward by the applicant do not have any impact on the
assessment of the likelihood of confusion in the present case.
According to case-law, the possibility cannot be ruled out that the coexistence of two
marks on a particular market might, together with other elements, contribute to
diminishing the likelihood of confusion between those marks on the part of the
relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, §
82). In certain cases, the coexistence of earlier marks in the market could reduce the
likelihood of confusion that the Office finds between two conflicting marks (judgment
of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility
can be taken into consideration only if, at the very least, during the proceedings
before the EUIPO concerning relative grounds for refusal, the applicant for the
European Union trade mark duly demonstrated that such coexistence was based
upon the absence of any likelihood of confusion on the part of the relevant public
between the earlier marks upon which it relies and the intervener’s earlier mark on
which the opposition is based, and provided that the earlier marks concerned and the
Decision on Opposition No B 2 817 149 page: 7 of 8
marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169,
§ 86).
In this regard it should be proved that they coexist in the market, which could actually
indicate that consumers are used to seeing the marks without confusing them. Last
but not least, it is important to note that the Office is in principle restricted in its
examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of
the coexistence of other marks in the market (and possibly in the register) at
national/Union level e.g. as an indication of ‘dilution’ of the distinctive character of the
opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis, and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this
argument of the applicant must be rejected as unfounded.
Inasmuch as the applicant implies that the mark applied for has already acquired a
reputation or enhanced distinctive character and filed various items of evidence in
support, this argument must be dismissed.
The right to an EUTM begins on the date when the EUTM is filed and not before, and
from that date on the EUTM has to be examined with regard to opposition
proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative
grounds for refusal, events or facts that happened before or even after the filing date
of the EUTM are irrelevant because the rights of the opponent, insofar as they
predate the EUTM, are earlier than the applicant’s EUTM.
Considering all the above, there is a likelihood of confusion on the part of the
German-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 13 713 151 . It follows that the contested
trade mark must be rejected for all the contested goods.
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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
Decision on Opposition No B 2 817 149 page: 8 of 8
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 120 EUTMR and therefore did not incur representation costs.
The Opposition Division
Jakub MROZOWSKI Elena NICOLÁS GÓMEZ Lucinda CARNEY
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
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.