OPPOSITION No B 2 494 915

Illva Saronno S.p.A., Via Archimede, 243, 21047 Saronno (VA), Italy  (opponent), represented by Fiammenghi – Fiammenghi, Via delle Quattro Fontane, 31, 00184 Roma, Italy (professional representative)

a g a i n s t

Amka I/S, Østre Boulevard 29, 8930  Randers NØ, Denmark, (applicant), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300  Copenhagen S Denmark (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 494 915 is upheld for all the contested goods, namely 

Class 32:  Non-alcoholic beer; Kvass [non-alcoholic beverage]; Lagers; Malt beer; Porter; Shandy; Stout; Beer; Beers enriched with minerals; Wheat beer; Coffee-flavored beer; Low alcohol beer; Beer-based cocktails.

Class 33:  Cider; Mead [hydromel]; Wine.

 

2.        European Union trade mark application No 13 535 984 is rejected for all the contested goods. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 535 984, namely against all the goods in Classes 32 and 33. The opposition is based on, inter alia, Italian trade mark registration No 1 216 949. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the evidence of use in relation to the opponent’s Italian trade mark registration No 1 216 949.

The contested application was published on 12/12/2014. The opponent was therefore required to prove that the trade mark was put to genuine use in Italy from 12/12/2009 to 11/12/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 32:        Beers.

Class 33:        Wines, spirits and liquors; alcoholic beverages.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 21/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/03/2016 to submit evidence of use of the earlier trade marks. On 02/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• 15 invoices in Italian for the years 2010 (5), 2011 (5) and 2012 (5) showing sales of products “Artic Frutta”, “Artic Ice”, “Artic Vodka”, for prices ranging from EUR 300 to EUR 5000, issued to Italian towns such as Mila, Rimini, Santa Maria la Carità,  Lurate Caccivio, Lecco, Parma

• Promotional material, articles (newspaper, online) in Italian, dated, inter alia, in 2009 and 2012, 2013 displaying bottles of vodka with the word “ARTIC”

• Summary table prepared by the opponent with Italian and European market figures for the years 2005-2009. In 2009, in Italy, the product “Artic” (vodka + frutta) was sold in 161.564 units  

• IRI Information Resources Infoscan market research study for “Artic Vodka” for the period 2005-2009, showing for 2009 15,4% market share for “Artic Vodka Aromatizzata” and 6,3% “Artic Vodka Bianca” in Italy, with 245.317 and 144.203 litres sold of the two different varieties of vodka. In the preceding years, i.e. 2005-2008, the market share of “Artic Vodaka Aromatizzata” varied between 21% and 15%.

• Invoices and newspaper articles pre-dating the relevant period (2005-2009 period)

The language and delivery addresses of the invoices, the study, the summary table prepared by the opponent and the language of the articles/promotional material show that the place of use is Italy.  Therefore, the evidence relates to the relevant territory.

The applicant claims that some of the Italian-language evidence is not translated. According to Rule 22(6) EUTMIR, where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office. However, it is left to the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings. In exercising its discretion, the Office balances the interests of both parties. In the present case, given the self-explanatory character of the submitted evidence, the Office considered that a request of translation was unnecessary.

Most of the evidence is dated within the relevant period. As argued by the applicant, some of the evidence is dated outside (prior to) the relevant period. However, even such evidence cannot completely be disregarded to the extent that it indicates continuous use for the period 2005-2009 which makes it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period. For example, the study showing a market share between 15-21% in the 2005-2009 period is a good indication of likely continued market presence beyond 2009.

Moreover, the fact that the opponent submitted no invoices for 2013-2014 is not particularly relevant in light of existing evidence for the remaining part of the relevant period. The use need not have been made throughout the period of five years, but rather within the five years. The provisions on the use requirement do not require continuous use (judgment of 16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).

The invoices, the summary table prepared by the opponent and the survey provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the word mark “ARTIC” has been used as registered. Although the invoices show terms like “Artic Frutta” (fruit in Italian), “Artic Ice”, “Artic Vodka”, the additions are merely non-distinctive terms referring to the kind of drink or its flavouring which do not alter the distinctive character of the mark in the form in which it was registered in accordance with Article 15(1)(a) and (b) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, it does reach the level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for vodka. These goods can be considered to form an objective subcategory within alcoholic beverages. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for vodka.

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.

1. The goods

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

Class 33: Vodka.

The contested goods are the following:

Class 32:  Non-alcoholic beer; Kvass [non-alcoholic beverage]; Lagers; Malt beer; Porter; Shandy; Stout; Beer; Beers enriched with minerals; Wheat beer; Coffee-flavored beer; Low alcohol beer; Beer-based cocktails.

Class 33:  Cider; Mead [hydromel]; Wine.

 

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Cider; mead [hydromel]; wine in Class 33 and lagers; malt beer; porter; shandy; stout; beer; beers enriched with minerals; wheat beer; coffee-flavored beer; low alcohol beer; beer-based cocktails in Class 32 are similar to the opponent’s vodka. 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.

Non-alcoholic beverages in class 32, such as non-alcoholic beer; kvass [non-alcoholic beverage] on the one hand, and the opponent’s vodka in Class 33 on the other, are often sold side by side both in shops and bars and on drinks menus. These goods target the same public and may be in competition. Therefore, they are similar to a low degree.

The applicant refers to previous decisions of the Office to support its arguments as regards the dissimilarity of the goods. 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.

In the present case, however, most of the previous cases referred to by the applicant are not relevant to the present proceedings. Some are dated in 1999, whereas the Office’s practice has been modified and adjusted to jurisprudence several times during the period of almost 20 years. The applicant refers to one particular decision of the Board of Appeal, R1218/2007-2 of 10/04/2008, COBANA/COVARA, which however compared wine to banana liqueur, which is not the product compared here.

In any event, 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 in such cases, even if the previous decisions submitted to the Opposition Division may to some extent be factually similar to the present case, the outcome may not be the same.

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 various degrees) are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ARTIC	Arctic Circle Brewing Company EST. 2014
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Both signs are word marks, the earlier sign is “ARTIC” while the contested sign is “Arctic Circle Brewing Company EST. 2014”.

The earlier sign, “Artic” will be understood in Italian as Arctic, i.e. the area of the world around the North Pole, and “Arctic Circle” in the contested sign will be perceived as the equivalent of the Italian Circolo Artico, i.e. the imaginary circle around the Earth about three-quarters of the way from the equator to the North Pole.

 

None of these meanings relate to the goods at hand and therefore their distinctiveness is normal. The term “Brewing” is also meaningless for the relevant public.

“Company” will be understood by the relevant Italian public as such, i.e. the undertaking producing the goods at hand, the same way the term “EST. 2014” will be perceived to refer to the year of establishment, even if “EST.” as such does not exist in Italian. Consequently, these elements are devoid of distinctive character.

Conceptually, the signs are highly similar, as both refer to areas around the North Pole, while the additional concepts perceived in the contested sign are non-distinctive.

Visually and aurally the signs coincide in “AR”*”TIC”, notably all the letters/sounds of the earlier sign and of the first element of the contested sign, and differ in the letter/sound “C” placed in the middle of this element in the contested sign, although given its position this difference might even go unnoticed. The signs furthermore differ in the letters/sounds of the additional elements of the contested sign, “Circle Brewing” and “Company EST. 2014”, although the latter elements are non-distinctive, and as a result they might even be omitted in pronunciation.

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. Consequently, the coincidence placed in the initial element of the contested sign has increased importance.

Therefore, the signs are visually and aurally 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.

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 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

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.

Moreover, account is taken of the fact that consumers, even attentive ones, 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).

In the present case, the signs visually and aurally coincide in the only element of the earlier sign. It is also the initial element of the contested sign, where it catches the consumers’ attention first. The difference in the letter “C”, placed in the middle of the contested sign’s coinciding element, is likely to go unnoticed, especially since the relevant public will perceive the same concept in both elements “ARTIC”/”ARCTIC”. The contested sign’s additional elements will not catch the consumers’ attention as much as the sign’s first element, especially given the fact that some of the differing elements are non-distinctive.

When confronted with the contested sign on similar, or even lowly similar goods, on account of the visual, aural and conceptual coincidence in the earlier sign and the contested sign’s first element, the reasonably well informed and reasonably observant and circumspect consumers will readily assume that those goods come from the same or economically linked undertakings.

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 Italian trade mark registration. 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 extensive use 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 Italian trade mark registration 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).

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

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.