OPPOSITION No B 2 728 270

Badet Clement et Compagnie (SAS), 10 Rue Lavoisier, 21700 Nuits Saint Georges, France (opponent), represented by Cabinet Guiu – Jurispatent, 10, rue Paul Thénard, 21000 Dijon, France (professional representative)

a g a i n s t

Bernard Boucheix, 28 avenue de la Vallée, 63130 Royat, France (applicant).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 270 is partially upheld, namely for the following contested goods and services:

Class 32:         Beer and brewery products; imitation beer; kvass [non-alcoholic beverage]; shandy; porter; stout; beer-based cocktails; beer-based beverages; non-alcoholic beer flavored beverages; wheat beer; beers enriched with minerals; black beer [toasted-malt beer]; lagers; flavored beers; beer; low alcohol beer; non-alcoholic beer; malt beer; pale ale; coffee-flavored beer; orange squash; extracts of unfermented must; unfermented preserved must; grape must, unfermented; orgeat; lemon squash; lime juice cordial; squashes [non-alcoholic beverages]; cordials.

Class 33:         Cider; spirits and liquors; rice alcohol; bitters; aperitifs; baijiu [Chinese distilled alcoholic beverage]; edible alcoholic beverages; alcoholic carbonated beverages, except beer; low alcoholic drinks; cocktails; alcoholic jellies; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; sake.

Class 35:         Retail services in relation to alcoholic beverages (except beer); wholesale services in relation to alcoholic beverages (except beer);

Class 43:         Provision of food and drink; restaurants.

2.        European Union trade mark application No 15 275 605 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 275 605, namely against some of the goods and services in Classes 32, 33, 35 and 43. The opposition is based on European Union trade mark registration No 11 349 487. The opponent invoked Article 8(1)(a) and (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 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.

1. The goods and services

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

Class 33: Wine.

The contested goods and services are the following:

Class 32: Beer and brewery products; processed hops for use in making beer; imitation beer; kvass [non-alcoholic beverage]; beer wort; malt wort; shandy; porter; stout; beer-based cocktails; beer-based beverages; non-alcoholic beer flavored beverages; wheat beer; beers enriched with minerals; black beer [toasted-malt beer]; lagers; flavored beers; beer; low alcohol beer; non-alcoholic beer; malt beer; pale ale; coffee-flavored beer; preparations for making beverages; orange squash; concentrates for use in the preparation of soft drinks; concentrates for making fruit drinks; essences for making non-alcoholic drinks, not in the nature of essential oils; essences for making flavoured mineral water [not in the nature of essential oils]; essences for making beverages; non-alcoholic fruit extracts used in the preparation of beverages; hop extracts for use in the preparation of beverages; extracts of hops for making beer; extracts of unfermented must; extracts for making beverages; unfermented preserved must; grape must, unfermented; orgeat; pastilles for effervescing beverages; powders used in the preparation of fruit-based beverages; powders for effervescing beverages; powders for the preparation of beverages; powders used in the preparation of soft drinks; preparations for making aerated water; preparations for making mineral water; preparations for making liqueurs; lemon squash; malt syrup for beverages; lime juice cordial; squashes [non-alcoholic beverages]; cordials; syrups for beverages; syrups for making fruit-flavored drinks; syrups for making non-alcoholic beverages; syrups for making beverages; syrups for making soft drinks; syrups for making flavoured mineral waters; syrups for lemonade.

Class 33: Cider; spirits and liquors; rice alcohol; bitters; aperitifs; baijiu [Chinese distilled alcoholic beverage]; edible alcoholic beverages; alcoholic carbonated beverages, except beer; low alcoholic drinks; cocktails; alcoholic jellies; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; sake; preparations for making alcoholic beverages.

Class 35: Commercial information services relating to wine; provision of business information relating to the agricultural industry; in; providing consumer product information relating to food or drink products; providing consumer product advice; alcoholic beverage procurement services for others [purchasing goods for other businesses]; retail services in relation to alcoholic beverages (except beer); retail services in relation to preparations for making beverages; retail services relating to food; retail services in relation to non-alcoholic beverages; retail services in relation to preparations for making alcoholic beverages; retail services in relation to foodstuffs; retail services in relation to beer; wholesale services in relation to alcoholic beverages (except beer); wholesale services in relation to non-alcoholic beverages; wholesale services in relation to preparations for making beverages; wholesale services in relation to preparations for making alcoholic beverages; wholesale services in relation to beer; wholesale services in relation to foodstuffs.

Class 43: Provision of food and drink; restaurants.

Contested goods in Class 32

The contested goods include beer and brewery products and imitation beer; shandy; porter; stout; beer-based cocktails; beer-based beverages; non-alcoholic beer flavored beverages; wheat beer; beers enriched with minerals; black beer [toasted-malt beer]; lagers; flavored beers; beer; low alcohol beer; non-alcoholic beer; malt beer; pale ale; coffee-flavored beer, which are various types of beers and beer-based beverages.

Beers are similar to wines. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings. The same can be said of the contested goods low-/non-alcoholic beers/imitation beer and beer-based beverages, which in the consumers’ perception function on the market as standard beers and, therefore, also have the same purpose as the opponent’s wine. They have the same producers, are distributed through the same channels and target the same consumers; they are also in competition with each other. Therefore, they must be considered similar.

The contested extracts of unfermented must; unfermented preserved must; grape must, unfermented are the intermediate products in winemaking; a must is ‘the juice of freshly pressed grapes before or during fermentation into wine; a thick, pulpy mixture of crushed grapes prepared for or undergoing fermentation’ (information extracted from Oxford English Dictionary at http://www.oed.com/view/Entry/124222?rskey=dGi8Ku&result=1&isAdvanced=false#eid). These goods and the opponent’s wines in Class 33 are similar to a low degree. They have the same method of use, they are in competition, they are sold through the same distribution channels and they target the same relevant public.

The contested kvass [non-alcoholic beverage]; orange squash; orgeat; lemon squash; lime juice cordial; squashes [non-alcoholic beverages]; cordials, like the opponent’s wine, can accompany a meal or be chosen by consumers just to quench thirst. They have the same methods of use, are in competition with each other and can be purchased in the same places, such as restaurants and bars or supermarkets. Therefore, they have the same distribution channels and target the same public. For these reasons, they are considered similar to a low degree.

The contested processed hops for use in making beer; beer wort; malt wort; preparations for making beverages; concentrates for use in the preparation of soft drinks; concentrates for making fruit drinks; essences for making non-alcoholic drinks, not in the nature of essential oils; essences for making flavoured mineral water [not in the nature of essential oils]; essences for making beverages; non-alcoholic fruit extracts used in the preparation of beverages; hop extracts for use in the preparation of beverages; extracts of hops for making beer; extracts for making beverages; pastilles for effervescing beverages; powders used in the preparation of fruit-based beverages; powders for effervescing beverages; powders for the preparation of beverages; powders used in the preparation of soft drinks; preparations for making aerated water; preparations for making mineral water; preparations for making liqueurs; malt syrup for beverages; syrups for beverages; syrups for making fruit-flavored drinks; syrups for making non-alcoholic beverages; syrups for making beverages; syrups for making soft drinks; syrups for making flavoured mineral waters; syrups for lemonade have a different purpose from the opponent’s wine, as they are essentially used to produce or make alcoholic or non-alcoholic beverages. They target a different public and have different producers from the opponent’s goods. Furthermore, they are neither complementary to nor in competition with each other; although they might be ingredients of cocktails or drinks, usually they are not; and they can neither be consumed as a drink to quench thirst nor be served with a meal. Therefore, consumers perceive these goods as two distinct groups of products. Their methods of use are also different. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. They usually have different distribution channels. Therefore, they are dissimilar.

The contested goods in Class 33

The contested alcoholic carbonated beverages, except beer include sparkling wines, which have significant levels of carbon dioxide, and thus, as a broader category, they include the opponent’s wine. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested goods in Class 33 also include various types of alcoholic beverages excluding wines, such as cider; spirits and liquors; rice alcohol; bitters; aperitifs; baijiu [Chinese distilled alcoholic beverage]; edible alcoholic beverages; low alcoholic drinks; cocktails; alcoholic jellies; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; sake.

The opponent’s wine is similar to the contested goods listed above. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These goods can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings.

The contested preparations for making alcoholic beverages are alcoholic essences, alcoholic extracts and alcoholic fruit extracts that are used for the preparation of cocktails, for example. Although these goods and the opponent’s wine may be consumed in the same places and on the same occasions and may satisfy the same need (but only after mixing them) – for example enjoyment of a drink as an aperitif – they do not belong to the same family of alcoholic beverages and consumers perceive these goods as two distinct groups of products. The goods are not normally displayed in the same shelves of supermarkets and other outlets selling drinks. It is considered that the contested preparations for making alcoholic beverages are dissimilar to the opponent’s wine.

The contested services in Class 35

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 remarks apply to wholesale services.

The goods covered by the retail/wholesale services and the specific goods covered by the other mark have to be identical for a finding of similarity; that is to say, they must either be exactly the same goods or fall within the natural and usual meaning of the same category.

The opponent’s goods are wine, which falls within the broader category of the opponent’s alcoholic beverages (except beer), which are the subject of the contested retail and wholesale services. Therefore, the contested retail services in relation to alcoholic beverages (except beer); wholesale services in relation to alcoholic beverages (except beer) are similar to a low degree to the opponent’s wine.

However, the contested retail services in relation to preparations for making beverages; retail services relating to food; retail services in relation to non-alcoholic beverages; retail services in relation to preparations for making alcoholic beverages; retail services in relation to foodstuffs; retail services in relation to beer; wholesale services in relation to non-alcoholic beverages; wholesale services in relation to preparations for making beverages; wholesale services in relation to preparations for making alcoholic beverages; wholesale services in relation to beer; wholesale services in relation to foodstuffs are dissimilar to the opponent’s goods in Class 33.

The remaining contested services, namely commercial information services relating to wine; provision of business information relating to the agricultural industry; in; providing consumer product information relating to food or drink products; providing consumer product advice; alcoholic beverage procurement services for others [purchasing goods for other businesses], are all classified in Class 35. Therefore, they are considered to relate to the commercial management of various types of businesses and undertakings, understood in a broad sense; thus, they do not relate to the actual retail or wholesale of the goods. They are, rather, preparatory or ancillary to the commercialisation of such goods. As the consultancy and information services and the procurement services relate to the services of selling and commercialising the goods, rather than to the goods themselves, therefore, the remaining contested services are considered dissimilar to the opponent’s goods.

The contested services in Class 43

The contested provision of food and drink; restaurants and the opponent’s wine, although they differ fundamentally in their natures (intangible services versus tangible goods), are closely related to each other, since a relationship of complementarity exists between them. It is common in establishments where food and drinks are provided, such as bars, pubs, restaurants, etc., for wine to be offered for sale to the customers. Therefore, in these circumstances the goods and services have the same distribution channels and providers. Consequently, they are similar to a low degree.

2. The signs

LA BELLE ANGÈLE	LA BELLE ANGÈLE
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar and partially dissimilar to the opponent’s goods. The signs are identical.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 11 349 487.

The signs were found to be identical and some of the contested goods, namely alcoholic carbonated beverages, except beer, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, the remaining contested goods and services – beer and brewery products; imitation beer; kvass [non-alcoholic beverage]; shandy; porter; stout; beer-based cocktails; beer-based beverages; non-alcoholic beer flavored beverages; wheat beer; beers enriched with minerals; black beer [toasted-malt beer]; lagers; flavored beers; beer; low alcohol beer; non-alcoholic beer; malt beer; pale ale; coffee-flavored beer; orange squash; extracts of unfermented must; unfermented preserved must; grape must, unfermented; orgeat; lemon squash; lime juice cordial; squashes [non-alcoholic beverages]; cordials in Class 32; cider; spirits and liquors; rice alcohol; bitters; aperitifs; baijiu [Chinese distilled alcoholic beverage]; edible alcoholic beverages; low alcoholic drinks; cocktails; alcoholic jellies; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; sake in Class 33; retail services in relation to alcoholic beverages (except beer); wholesale services in relation to alcoholic beverages (except beer) in Class 35; provision of food and drink; restaurants in Class 43 – are similar to the goods (wine) for which the earlier trade mark is registered. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services.

However, the rest of the goods and services are dissimilar. As the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gregor SCHNEIDER

Birgit FILTENBORG

Michele M. BENEDETTI-ALOISI

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.