OPPOSITION No B 2 684 838
Sazerac Company, Inc., 3850 N. Causeway Blvd., Suite 1695, Metairie, Louisiana 70002, United States (opponent), represented by Cooley (UK) LLP, Dashwood 69, Old Broad Street, London, City of London, EC2M 1QS, United Kingdom (professional representative)
a g a i n s t
Асета БГ Еоод, ул. Преслав 24, 9000 Варна, Bulgaria (applicant), represented by Iliana Marinova, Ivanka Pakidanska, 6 Trapezitsa Str, Fl.1, Office 4, 1000 Sofia, Bulgaria (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 684 838 is upheld for all the contested goods.
2. European Union trade mark application No 14 945 431 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 14 945 431, namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 2 597 961. The opponent invoked Article 8(1)(b) and 8(5) 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 goods
The goods on which the opposition is based are the following:
Class 33: Whisky; Scotch whisky; Blended Whisky; Malt Whisky; Spirits [beverages].
The contested goods are the following:
Class 33: Alcoholic beverages (not including beers); spirits (beverages); whiskey; bourbon whiskey.
Whisky/whiskey; spirits [beverages] are identically contained in both lists of goods (including synonyms).
The contested bourbon whiskey is included in the broad category of the opponent’s whisky. Therefore, they are identical.
The contested alcoholic beverages (not including beers) include, as a broader category, the opponent’s spirits [beverages]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 to be average.
As to the applicant’s claim that the relevant public is highly attentive, this claim cannot be accepted.
Alcoholic drinks are offered in different quality and price range and the average consumer is purchasing them because of different reasons. It is recognised that certain subcategories of alcoholic drinks, such as, for example, certain categories of whisky or wine, can, due to their rarity or their high price, target a limited number of connoisseurs or even collectors who would show a high degree of attention. None the less, that finding cannot be automatically valid as regards the alcoholic beverages at issue. Alcoholic drinks are, in general, everyday consumer goods, which are usually subject to widespread distribution, ranging from the food section of supermarkets, department stores and other retail sales outlets, to restaurants and cafés and are therefore accessible to the general public (24/11/2016, T-250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 25-26).
Thus, even if it were accepted that there are certain subcategories of alcoholic drinks that are known only to a very exclusive public, or which are accessible only to such a public, that would, if that were the case, demonstrate a higher level of attention than average. In any event, it must be observed that the applicant has not proven that the goods covered by the trade marks at issue belong to such a subcategory. The applicant has not established that those goods are not directed at the general public, but exclusively to a specific category of consumers. On the contrary, its arguments are restricted to generalisations concerning alcoholic drinks.
- The signs
| EAGLE RARE
|
|
|
Earlier trade mark |
Contested sign |
The relevant territory is 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 verbal elements in the signs in comparison are meaningful in certain territories, for example, in those countries where English is understood. Moreover, the understanding of the words may have an impact on the distinctiveness of certain elements of the signs. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta.
The earlier mark is a word mark consisting of two words. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower case characters.
The contested mark is a figurative mark consisting of two words written in slightly stylized black capital letters with a yellowish shadowing. The word ‘NOBLE’ is placed above the word ‘EAGLE’ and it is approximately 1/3 smaller than the latter.
The common verbal element ‘EAGLE’ will be perceived by the relevant public mainly as ‘a large bird of prey with a massive hooked bill and long broad wings, known for its keen sight and powerful soaring flight’ (see https://en.oxforddictionaries.com/definition/eagle). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The element ‘RARE’ of the earlier sign will be associated with ‘not common’ as well as ‘extraordinary, unusually excellent; fine’. The element ‘NOBLE’ of the contested sign will be associated with i.a. ‘of excellent or superior quality’ (see for example https://en.oxforddictionaries.com/definition/rare; http://www.dictionary.com/browse/rare; https://en.oxforddictionaries.com/definition/noble). Bearing in mind that the relevant goods are alcoholic beverages these elements are considered to be non-distinctive as they will be perceived as denoting the qualitative characteristic of the goods at issue.
None of the marks has an element that could be considered clearly more dominant (most eye-catching) than other elements.
Visually, the signs coincide in the word ‘EAGLE’ and differ in their additional terms ‘RARE’ and ‘NOBLE’ respectively as well as in the graphic representation of the contested sign.
It must be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
Therefore, the relevant consumer is very likely to perceive the word ‘EAGLE’ in both signs immediately, especially considering the non-distinctive character of the remaining verbal elements in the marks and the fact that this word is positioned at the beginning of the earlier mark and it is represented in a bigger size in the contested mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the marks coincides in the sounds of the word ‘EAGLE’ present identically in both signs. The pronunciation differs in the sound of the remaining two verbal elements in the two marks ‘RARE’ and ‘NOBLE’ respectively. However, the aural differences due to these words do not have enough impact in differentiating the signs since these words are considered non-distinctive for the goods concerned.
Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements of both marks. As already mentioned previously the adjectives ‘RARE’ and ‘NOBLE’ are considered non-distinctive in relation to the goods at hand. Therefore their meanings do not affect the recognition and comprehension of the word ‘EAGLE’ in the respective signs. In any case, even with the respective adjectives, the relevant public will still perceive in both signs the reference to an eagle even if in one case it will be discern as a noble eagle and in the other as a rare one.
Consequently, to the extent that both marks will be clearly associated with the meaning of the word ‘EAGLE’, as defined above, the marks are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
According to the claims which the opponent put down in the opposition notice, the earlier trade mark has a substantial reputation.
However, despite claiming the reputation of the earlier mark, the opponent failed to submit evidence in order to prove this claim within the prescribed time limit.
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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16).
In the present case, all of the contested goods are identical and are directed at the public at large whose degree of attention is deemed to be average.
The signs are visually similar to an average degree, and conceptually and aurally even similar to a high degree.
As explained above, the words ‘RARE’ and ‘NOBLE’ will not affect the recognition and perception of the word ‘EAGLE’ in the two signs by the relevant public.
Furthermore, the Opposition Division notes, that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.
Since the component ‘EAGLE’ will be easily recognized and perceived in both signs and because of the meaning of the components ‘RARE’ and ‘NOBLE’ and the findings of the above paragraph, the Opposition Division finds that the relevant consumer may perceive the contested sign as a variation of the earlier mark. Consequently, the public may attribute the same (or economically linked) commercial origin to the goods that are identical, even if (as the applicant claims and the Opposition Division does not agree) the public’s degree of attention would be higher.
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 is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning). judgments of 11 September 2014, Aroa Bodegas v OHIM — Bodegas Muga (aroa), T-536/12, not published, EU:T:2014:770, paragraph 55.
In its observations, the applicant argues that the word element ‘EAGLE’ has a low distinctive character given that there are many trade marks that include this element. In support of its argument the applicant cites several trade mark registrations which include the word EAGLE for the goods in class 33.
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.
The applicant furthermore provides printouts from several websites in order to reinforce its claims. However, several printouts are from websites from outside of the EU territory (e.g. United States, South Africa). Considering that it is highly unlikely that an average European consumer will shop on those websites, apart from a very small group of connoisseurs, which however does not represent the majority of the relevant consumers, the Opposition Division considers them as out of place. From the remaining printouts submitted by the applicant and without any further evidence, it cannot be concluded either that i) consumers have indeed become used to the word element ‘EAGLE’, especially considering that all of the cited examples includes also other verbal elements, e.g. GLENN EAGLE, EAGLES DARE, EAGLE BAY (beer), EAGLE CREEK (wine), SCREAMING EAGLE (wine), or ii) there is no relationship or agreements between the producers.
It follows that the evidence filed does not demonstrate that the relevant consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word element ‘EAGLE’ in relation to the relevant goods. Under these circumstances, the applicant’s claim must be set aside.
The applicant 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).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public in the relevant territory. 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.
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 ground of the opposition, namely Article 8 (5) EUTMR.
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
| Lars HELBERT | Renata COTTRELL | Sigrid DICKMANNS |
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.