OPPOSITION No B 2 628 314

Pivovarna Union d.d., Pivovarniška ulica 2, 1000 Ljubljana, Slovenia (opponent), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative)

a g a i n s t

Brewers and Union UG, GanghoferStrasse 31, 80339 Munich, Germany (applicant), represented by Mw Trade Marks Ltd, 88 Kingsway, London WC2B 6AA, United Kingdom (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 628 314 is upheld for all the contested goods, namely 

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; low-alcohol beer; fruit drinks and fruit juices; syrups and other preparations for making beverages.

2.        European Union trade mark application No 14 807 648 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 807 648 namely against all the goods in Class 32. The opposition is based on, inter alia, Slovenian trade mark registration No 201 170 582. The opponent invoked Article 8(1)(b) and Article 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 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 Slovenian trade mark registration No 201 170 582.

1. The goods and services

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

Class 32:        Beer; a mixture of light and dark beers; non-alcoholic beer; beer with a lower calorie diet and alcohol; hops beverages; a mixture of beer with fruit juices, fruit extracts and / or fruity; a mixture of beer and lemonade or orangeade; mixtures of beer and non-alcoholic beverages; mineral water; drinking water; table water; carbonated water; water from springs; soda; lemonade; flavored drinks based on mineral water and fruits or fruit extracts; soft drinks with fruit; fruit drinks and fruit juices; nectars; non-alcoholic beverages; syrups and other preparations for making beverages; fruit drinks and / or fruit juices with the addition of milk, milk products or milk desserts; vegetable drinks and juices; non-alcoholic beverages made from vegetables or containing vegetables; non-alcoholic fermented drinks.

The contested goods are the following:

Class 32:        Beers; mineral and aerated waters and other non-alcoholic drinks; low-alcohol beer; fruit drinks and fruit juices; syrups and other preparations for making beverages.

The contested beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages are identically contained in both lists of goods (including synonyms).

The contested low-alcohol beer is included in the broad category of the opponent’s beer and therefore 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 and services found to be identical are directed at the public at large. The degree of attention is average.

3. The signs

UNION	AND UNION
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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 coinciding word ‘UNION’ as such is not present in the Slovenian dictionary, nor has it become a commonly used or known word for the relevant public. Furthermore, to the extent that the word may be perceived by a part of the public as the Slovenian word ‘uníja’, due to the proximity of the equivalents, it has to be considered that even in such a scenario, the word is not descriptive of any of the qualities or specifications of the goods in Class 32, which are beer and other beverages. The Slovenian word ‘uníja’, however, is a commonly used word for political formations or associations and consequently, it is rather known within this political concept (European Union, Soviet Union, etc.); consequently, it cannot be assumed that this word is commonly used to designate a group or an association of brewers/beer producers. Therefore, this element is concluded to have normal distinctiveness for the purpose of these proceedings.

By contrast, the only additional element, namely the verbal element ‘AND’ of the contested sign, is a basic English word that is known to the relevant public throughout the European Union and thus in Slovenia. As it is a conjunction ‘[u]sed to connect words of the same part of speech, clauses, or sentences, that are to be taken jointly’ (see for all these meanings www.oxforddictionaries.com), it will have only a limited significance for consumers encountering the mark.

Finally, as the two signs are word marks, they have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘UNION’, being the earlier mark and present as a second word in the contested sign. They only differ in the additional word ‘AND’ in the contested sign, which has less impact. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛UNION’, present identically in both signs. The pronunciation differs in the sound of the additional word of the contested sign, ‘AND’, which has no counterpart in the earlier mark but has less impact. Therefore, the signs are similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, it cannot be ruled out, as illustrated above, that the element ‘UNION’, included in both signs, may be associated with the Slovenian equivalent ‘uníja’ in the context of ‘an association, alliance, or confederation of individuals or groups for a common purpose, esp. political’ by a part of the public.

As previously noted, the word ‘AND’ will be understood by all the public but will have less impact than the coinciding element ‘UNION’.

In the light of the foregoing, the signs are conceptually similar to an average degree for a part of the public.

As the signs have been found similar from an aural, visual and, to some extent, a conceptual point of view, 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

In the present case, the signs are visually, aurally and, where applicable, conceptually similar to an average degree to the extent that the contested sign entirely incorporates the earlier mark’s verbal element. In addition, the degree of attention of the relevant public will be average. As illustrated in section c) above, when encountering either of the two marks, a significant part of the public may associate one with the other due to the coinciding verbal element, ‘UNION’, present as an individualised element in both marks.

In addition, although consumers might be able to distinguish between the signs, owing to the differentiating word ‘AND’ in the contested sign, this additional element has less impact that the coinciding element ‘UNION’ and is not capable in itself of excluding any potential link that consumers may make. Moreover, ‘AND’ might be seen as indicating a new line of the opponent’s products. Consequently, consumers might believe that the trade marks belonged to the same undertaking or economically linked undertakings, which would lead to a likelihood of association. Moreover, it must be taken into account that the conflicting signs are, in fact, word marks with no other differentiation than this additional verbal element.

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 identity of the goods in question offsets the differences between the signs deriving from the additional word in the contested sign.

Finally, account is 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).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Slovenian trade mark registration No 201 170 582. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Likewise, 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.

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

Sonia MEHANNEK

Steve HAUSER

Martina GALLE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.