OPPOSITION No B 2 710 476

Destilerias M.G., S.L., Miquel Guanse s/nº, 08800 Vilanova i la Geltru (Barcelona), Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, n° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Puma SE, PUMA Way 1, 91074 Herzogenaurach, Germany (applicant), represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft mbB, Landschaftstraße 6, 30159 Hannover, Germany (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 710 476 is upheld for all the contested goods, namely

Class 33:        Alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based; pre-mixed alcoholic beverages.

2.        European Union trade mark application No 15 108 848 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some goods of European Union trade mark application No 15 108 848, namely against all the goods in Class 33. The opposition is based, inter alia, on European Union trade mark registration No 12 181. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 181 343.

1. The goods

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

Class 33:        Alcoholic beverages, in particular gin and gin-based preparations.

The contested goods are the following:

Class 33:        Alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based; pre-mixed alcoholic beverages.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Alcoholic beverages are identically contained in both lists of goods (including synonyms).

The contested pre-mixed alcoholic beverages, other than beer-based; pre-mixed alcoholic beverages are included in the broad category of the opponent’s alcoholic beverages, in particular gin and gin-based preparations. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

	MG PUMA
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As regards the earlier trade mark, which is composed of one verbal element, ‘GINMG’, in a commonplace bold typeface, it is noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).

The earlier trade mark has no meaning as a whole; however, the word ‘GIN’ will have individual meaning and the relevant public will therefore dissect this verbal element into two words, ‘GIN’ and ‘MG’. The word ‘GIN’ is meaningful in certain territories, for example in those countries where English and Spanish are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and Spanish-speaking parts of the public.

The element ‘GIN’ will be perceived as a clear distilled alcoholic spirit. Bearing in mind that the relevant goods are ‘alcoholic beverages’, this element is non-distinctive for the goods in Class 33. The element ‘MG’, present in the earlier and contested signs, has no meaning for the relevant public and is, therefore, distinctive.

The word ‘PUMA’ conveys the concept of ‘a large American wild cat with a plain tawny to greyish coat, found from Canada to Patagonia’ (information extracted from English Oxford Living Dictionaries on 21/07/2017 at https://en.oxforddictionaries.com/definition/puma). As there is no connection with the relevant goods, it is therefore distinctive.

The figurative element, stylisation and colouring of the earlier mark have a very limited impact on the consumer’s perception given 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).

Visually and aurally, the signs coincide in the letters and sequence of sounds ‘MG’. They differ in the descriptive word ‘GIN’ of the earlier mark and in the second element ‘PUMA’ of the contested sign. Although the earlier mark is also visually different from the contested sign in its figurative element, stylisation and colouring, these differences have a limited impact on the perception of this mark, as noted above.

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.

Therefore, taking into account the first descriptive element of the earlier mark, ‘GIN’, and the coinciding element ‘MG’, which is at the beginning of the contested sign, the signs are visually and aurally similar to a low degree.

Conceptually, the public in the relevant territory will perceive the meaning of the element of the earlier mark ‘GIN’, although it is descriptive, and the element of the contested sign ‘PUMA’, as explained above. Therefore, 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 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 a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

In the present case, the goods at issue are identical and they target the public at large with a normal degree of attention. The distinctiveness of the earlier mark is normal.

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).

In the present case, the conflicting signs were found to be visually and aurally similar to a low degree on account of the coinciding distinctive element ‘MG’. Although both signs contain further elements, ‘MG’ is the only distinctive verbal element in the earlier mark and the first element in the contested sign. Therefore, the Opposition Division is of the view that the differences between the signs, including those from a conceptual point of view, are not sufficient to safely rule out a likelihood of confusion on the part of the relevant public, which, furthermore, will not display a heightened degree of attention.

Moreover, account must also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by adding verbal elements to them, in order to denote new product lines targeting a particular group of consumers.

In the present case, although the relevant public can detect visual and aural differences between the conflicting signs, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

In its observations, the applicant argues that the element ‘MG’ in the earlier and contested signs has a low degree of distinctive character given that there are many trade marks that include this element. In support of its argument, the applicant refers to several trade mark registrations in Bulgaria, the European Union, France, Italy, Lithuania, Portugal, Spain and the United Kingdom.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘MG’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also 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 previous cases referred to by the applicant are not relevant to the present proceedings because, in the comparison of signs, their visual similarity is lower than in the present case and they refer to goods and services that are different from those in Class 33. The relevant goods in the present case are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the aural similarity between the signs is particularly relevant (see 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).

Furthermore, 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.

Considering all the above, there is a likelihood of confusion on the part of the English- and Spanish-speaking parts 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 12 181 343. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘GINMG’ 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). Consequently, it is not necessary to enter into the issue of proof of use of earlier Spanish trade mark registration No 2 195 809.

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

Carlos MATEO PÉREZ

María Clara  IBÁÑEZ FIORILLO

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.