OPPOSITION No B 2 763 905

Old Kentucky Restaurants Limited, 27 Fleet Street, Birmingham  B3 1JP, United Kingdom (opponent), represented by Nucleus IP Limited, 10 St. Bride Street, London  EC4A 4AD, United Kingdom (professional representative)

a g a i n s t

Wilhelm Braun Erben & Co. KG, Bachstraße 14, 53474 Bad Neuenahr-Ahrweiler, Germany (applicant), represented by Burghart Podszus, Auf dem Graben 38, 79219 Staufen, Germany (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 763 905 is upheld for all the contested goods.

2.        European Union trade mark application No 15 513 872 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 15 513 872 ‘EARL BROWN‘ (word). The opposition is based on, inter alia, United Kingdom trade mark registration No 3 070 781 . The opponent invoked Article 8(1)(b) and 8(5) EUTMR. The opponent also invoked Article 8(4) EUTMR in relation to an earlier non-registered trade mark.

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 right. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 070 781.

1. The goods and services

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

Class 32:        Preparations for making beverages namely beer, ale, stout, porter and lager.

Class 33:        Preparations for making beverages namely spirits and liquers, alcoholic wines, alco-pops and alcoholic cocktails.

Class 43:        Public house, bar, wine bar, catering services, cafe services; cafeteria services; canteen services; provision of food and drink, restaurant and self-service restaurant services; snack bar services; hotel services; room hire.

The contested goods are the following:

Class 32:        Beer and brewery products; Non-alcoholic beverages.

Class 33:        Alcoholic beverages (except beer).

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 32

The contested beer and brewery products are highly similar to the opponent’s preparations for making beverages namely beer, ale, stout, porter and lager in Class 32 as they have the same purpose. They can coincide in the relevant consumer and distribution channels. Furthermore they are in competition.

The contested non-alcoholic beverages and the opponent’s services provision of food and drink in Class 43 are similar to a low degree as they can coincide in producer/provider and distribution channels. Furthermore they are complementary.

Contested goods in Class 33

The contested alcoholic beverages (except beer) are highly similar to the opponent’s preparations for making beverages namely spirits and liquers, alcoholic wines, alco-pops and alcoholic cocktails in Class 33 as they have the same purpose. They can coincide in the relevant consumer and distribution channels. Furthermore they are in competition.

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 similar to a high degree and similar to a low degree are directed at the public at large.

The degree of attention will vary from low to average. It will be low for the goods that are cheap and are bought quite frequently, for example non-alcoholic beverages.

3. The signs

	EARL BROWN
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The earlier trade mark registration protects a series of two marks, each consisting of a slightly stylised word ‘BROWNS‘ depicted in a different colour (brownish and black).

The contested sign is a word mark comprising the words ‘EARL BROWN’.

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 contested sign ‘EARL BROWN’ will be perceived by the relevant public as a male name and surname, ‘BROWN’ being a common English surname while ‘EARL’ being not that common. Both elements are distinctive in relation to the relevant goods. Although ‘BROWN’ will be perceived as a surname in the context of the contested sign, it will also be immediately associated by the relevant consumers with the colour ‘brown’.

The element ‘BROWNS’ of the earlier mark brings to mind the colour ‘brown’ and it is distinctive in relation to the relevant goods and services. It will not be perceived as a name.

Visually, the signs coincide in the sequence of letters ‘BROWN*’. However, they differ in the additional letter ‘S’ at the end and the slight stylisation of the typeface of the earlier trade mark. The marks also differ in the additional element ‘EARL’ of the contested sign that has no counterpart in the earlier trade mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BROWN’, present identically in both signs. The pronunciation differs in the sound of the letter ‘S’ in the earlier trade mark and of the letters ‛EARL’ of the contested mark, which have no counterparts in the trade mark of the other party.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same concept of the colour ‘brown’, the signs are conceptually similar to an average 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.

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 and services 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 have been found partially similar to a high degree and partially similar to a low degree. The earlier trade mark’s degree of distinctiveness is average. The degree of attention of the relevant public will vary between low and average.

The marks are visually, aurally and conceptually similar to an average degree. Although the marks have a different structure and length, it should be noted that the earlier trade mark is almost entirely included in the contested sign (save for the last letter ‘S’ and the stylisation) where it plays a separate distinctive role. Although the element ‘BROWN’ in the contested sign is a common family name in the United Kingdom, as correctly pointed out by the applicant, it is distinctive for the relevant goods and will also be associated with the idea of the colour ‘brown’ (the same as the earlier trade mark). On the whole, the Opposition Division considers that the marks have more similarities than differences and that the overall impressions created by the marks are, therefore, similar.

The applicant asserts that the first part of the marks, which primarily catches the consumer’s attention, is different in the present case. It also argues that ‘EARL’ is the dominant element of the contested sign and that this dominant element does not exist in the opponent’s mark. Although the Opposition Division acknowledges that the beginning of the marks has a particular significance for the comparison of signs and that the respective beginnings of the trade marks in dispute here are indeed different, it should be recalled that the marks have to be compared on the basis of their overall impression. The different beginning of the marks in the present case cannot automatically result in a finding of lack of similarity between the marks.

Furthermore, the Opposition Division considers that the element ‘EARL’ is not the most dominant (visually eye-catching) element of the contested sign because the contested sign is a word mark which, by definition, cannot have any visually dominant (eye-catching) element. When it comes to the distinctiveness of the element ‘EARL’ and the element ‘BROWN’, both are considered distinctive.

The Opposition Division does not deny that there are certain differences between the marks. Nevertheless, on balance, the similarities prevail and, bearing in mind the principle of imperfect recollection of marks, the overall impressions created by the marks are similar enough to lead to a likelihood of confusion. This is in essence because the earlier trade mark ‘BROWNS’ is almost entirely included in the contested sign ‘EARL BROWN’ where it represents one of the two distinctive elements.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. It is considered that the degree of similarity of the marks is sufficiently pronounced to cause confusion also in respect of the goods that are similar only to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s UK trade mark registration No 3 070 781. It follows that the contested trade mark must be rejected for all the contested goods.

As the above earlier right 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(5) EUTMR (in relation to the earlier UK trade mark No 3 070 781) and Article 8(4) EUTMR (in relation to the earlier non-registered trade mark).

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

Teodora TSENOVA-PETROVA

Vít MAHELKA

Lucinda CARNEY

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.