OPPOSITION No B 2 729 187
Nina Kempken, Obenflachsberg 86, 42653 Solingen, Germany (opponent), represented by Demski & Nobbe, Augustastr. 15, 40721 Hilden, Germany (professional representative)
a g a i n s t
Ismail Ismail, str. ‘Ruse’ 2, vh. B, floor 3, ap. 5, 5800 Pleven, Bulgaria (applicant), represented by Rositsa Stoyanova, str. ‘Rodopski izvor’, block 233, office 2, ground floor, 1680 Sofia, Bulgaria (professional representative).
On 21/06/2017, the Opposition Division takes the following
1. Opposition No B 2 729 187 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 244 007 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 244 007, namely against all the goods in Class 32 and some of the goods and services in Classes 30 and 35. The opposition is based on European Union trade mark registration No 12 629 481. 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 goods and services
The goods on which the opposition is based are the following:
Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices, syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
The contested goods and services, after the applicant’s limitation of 10/09/2016, are the following:
Class 32: Energy drinks.
Class 35: Wholesale services in relation to energy drinks; retail services in relation to energy drinks.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.
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.
Contested goods in Class 32
The contested energy drinks are included in the broad category of the opponent’s other non-alcoholic beverages. Therefore, they are identical.
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.
Therefore, the contested retail services in relation to energy drinks are similar to a low degree to the opponent’s other non-alcoholic beverages, since, as stated above, energy drinks are identical to other non-alcoholic beverages.
The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services. Therefore, the contested wholesale services in relation to energy drinks are similar to a low degree to the opponent’s other non-alcoholic beverages.
- 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 or similar to a low degree target mainly the public at large. However, wholesale services target professional consumers with specific professional knowledge or expertise. The degree of attention of the public is average.
- The signs
Earlier trade mark
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Most elements of the signs are meaningless in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.
The earlier mark is a figurative sign containing a figurative element that creates a three-dimensional impression. It depicts a bear with open jaws in greyscale. Above it is the word ‘BEAR’ in black letters outlined in white. Below this picture is the word ‘TRACK’ in bold red letters outlined in black. Below this word element is the word ‘CANADA’ in bold white letters with its second ‘A’ slanting. This last verbal element will be perceived by the relevant public as an indication that the relevant goods originate from Canada and it is therefore weak. The remaining elements of the earlier mark have no meaning in relation to the relevant goods for the relevant public and are therefore distinctive.
The contested sign is a figurative mark containing a figurative element that also creates a three-dimensional impression. It depicts a bear with yellow eyes standing upright with its four paws on the ground. Below it are two word elements ‘BLACK’ and ‘BEARI’ in white bold characters. The relevant public will understand the word ‘black’ as meaning the darkest colour of all, that is, the colour of the sky at night when there is no light at all, since it is a very basic English word that will be understood in all Member States. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. Therefore, the contested sign has no elements that could be considered clearly more distinctive than other elements, since the remaining elements have no meaning in relation to the relevant goods and services for the relevant public and are, therefore, distinctive.
The Opposition Division is of the opinion that all elements of the signs in dispute will be immediately perceived visually when consumers encounter the mark. Consequently, the signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in that the sequence of letters ‘BEAR’ forming the first verbal element of the earlier mark coincides with letters in the second verbal element of the contested sign, ‘BEARI’, which has an additional letter ‘I’. They also coincide in the sequence of letters ‘**ACK’, which are included in the first verbal element of the contested sign and in the second verbal element of the earlier mark. These elements differ in the first two letters, ‘TR***’ in the earlier mark versus ‘BL**’ in the contested sign. The signs also differ in the weak additional element ‘CANADA’ of the earlier mark.
Both signs depict a bear on a black background, although it is reproduced in a different manner, colour, position and style.
Therefore, the signs are visually at most similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘**ACK’ and ‘BEAR*’, present in both signs; however, these are parts of words that appear in a different order in each sign. The pronunciation differs in ‘TR***’ versus ‘BL***’, in the additional letter ‘I’ of the element ‘BEARI’ of the contested sign and in the fact that the words containing these letters will be pronounced in reverse order. The pronunciation also differs in the sound of the additional word ‘CANADA’ of the earlier mark, which is weak.
Therefore, the signs are aurally similar to a low degree.
Conceptually, the public will recognise the depiction of a bear in both marks. The word ‘CANADA’ of the earlier trade mark indicates the commercial origin of the goods for the relevant public. The element ‘BLACK’ of the contested sign will be understood by the relevant public, as stated above.
Therefore, the signs are conceptually similar to an average degree, insofar as they both refer to the concept of a bear.
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.
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.
- 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). Furthermore, the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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).
The contested goods and services are identical or similar to a low degree to those of the earlier trade mark and they target the public at large and business customers with specific professional knowledge or expertise whose degree of attention is average. The signs are visually and conceptually similar to an average degree and aurally similar to a low degree.
The figurative elements of the marks show some visual differences but they both include the image of a bear on a black background and coincide in the sequences of letters ‘*ACK’ and ‘BEAR*’, present in both signs, albeit forming parts of words that appear in reverse order. In addition, it should be borne in mind that, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect picture of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Considering all the above and the overall impression given by the marks, there is a likelihood of confusion for part of the public, namely the non-English-speaking part 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 12 629 481. It follows that the contested trade mark must be rejected for all the contested goods and services.
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
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.