OPPOSITION No B 2 617 325

Rives Pitman S.A., Aurora,4, 11500 Puerto de Santa Maria (Cádiz), Spain (opponent), represented by Rodolfo de la Torre S.L., C/ San Pablo, nº15-3º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

Russell Distillers Limited, 1 Atholl Place, Edinburgh  EH3 8HP, United Kingdom (applicant), represented by Phillips & Leigh, 5 Pemberton Row, London  EC4A 3BA, United Kingdom (professional representative).

On 01/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 617 325 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 495 006 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 495 006. The opposition is based on, inter alia, European Union trade mark registration No 1 712 140. 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 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 European Union trade mark registration No 1 712 140.

1. 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 drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

The contested goods and services 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), spirits and liquors.

Class 40: Spirits distillery services. 

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.

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

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

Contested goods in Class 33

The contested alcoholic beverages (except beers) are identically contained in both lists of goods.

The contested spirits and liquors are included in the broad category of the opponent’s alcoholic beverages (except beers). They are identical.

Contested services in Class 40

The contested spirits distillery services are services provided in relation to a distillery being a place where strong alcoholic drinks, also spirits, are made by a process of distilling. These services are similar to a low degree to the opponent’s alcoholic beverages (except beers) in Class 33. These goods and services refer to a different stage in the process of the goods, namely spirits, which fall under the broader category of alcoholic beverages such as those of the opponent, as described above. The same company that renders the contested services may also, at the same time, elaborate and distribute the goods. Thus the goods and services may have the same origin and distribution channels.

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 and similar to a low degree are directed at the public at large, as well as at specialised business customers in the spirit distillery field. The degree of attention is considered to be average, as far as the relevant goods in Classes 32 and 33 are concerned, and rather heightened for the services in Class 40.   

3. The signs

RIVES
Earlier trade mark	Contested sign

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Most of the verbal elements are not meaningful 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 such as the German-speaking public.

The earlier mark is the word mark ‘RIVES’ and the contested sign is a figurative mark consisting of the verbal element ‘RIVET’ in a fanciful stylisation and the verbal elements ‘COPPER’ above it and ‘DISTILLETY’ and ‘ENGLAND’ underneath, written in much smaller standard letters.  

The element ‘RIVES’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. The verbal elements ‘copper’ and ‘rivet’ are meaningless in German and, therefore, distinctive for the relevant public.

However, the word ‘England’ of the contested sign will be understood as a division of Great Britain and most probably as a reference to the origin of all the goods and services in question, consequently it will be paid less or no attention by the relevant public that will focus on the more distinctive elements of the sign.

 The verbal element ‘distillery’ will be associated with its German equivalent ‘Destillerie’ and understood as a place where alcoholic drinks, in particular spirits, are made by distillation. Bearing in mind that part of the relevant goods and services are alcoholic beverages in general and spirit distillery services, this element is weak for all the relevant goods in Class 33 and non-distinctive for the services in Class 40. Furthermore, taking into account that the goods in Class 32 are beverages products, although they are not technically related in a direct manner (the goods in Class 32 are usually not distilled), this term may be still allusive to some extent to the character of the goods in question as beverages. Therefore, it is considered that this weak or non-distinctive element will be also paid less or no particular attention at all, as far as it is perceived in relation to the goods and services mentioned above.

In addition, the element ‘RIVET’ in the contested sign is the dominant element as it is the most eye-catching due to its bigger size and central position compares to the remaining elements of the sign.

Visually, the signs coincide in the string of the first letters of their sole (by the earlier mark) or more dominant (by the contested sign) elements, namely ‘RIVE*’. However, they differ in the last letters of these elements, namely ‘S’ in the earlier mark and ‘T’ in the contested sign, as well as in the additional verbal elements of the contested sign, ‘COPPER’, ‘DISTILLERY’ and ‘ENGLAND’, and the fanciful stylisation of its dominant element ‘RIVET’. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the relevant public will pay more attention to the verbal element ‘RIVET’ than to the fanciful pattern that it is embellished with. Furthermore, 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. Therefore, taking into account all the relevant factors mentioned above and particularly bearing in mind the lower or no distinctiveness of some of the differentiating elements of the contested signs for some of the goods and services, the signs are considered similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛RIVE*‘, present identically in the sole element of the earlier mark and in the dominant element of the contested sign.  The pronunciation differs in the sound of the last letters of these elements, namely ‘S’ in the earlier mark and ‘T’ in the contested sign, as well as in the remaining verbal elements of the contested sign, which have no counterpart in the earlier mark. However, taking into account the less or no distinctive of the words ‘DISTILLERY’ and ‘ENGLAND’, as described above, it may be assume that these words will not be uttered by the relevant public at all and to that extent the signs are   Therefore, the signs are similar to an average degree in such cases.

Furthermore, it cannot be completely ruled out that the public may refer to the contested mark only by its more dominant verbal element, ‘RIVET’, and bearing in mind that the signs only differ in their last letters, they are considered aurally highly similar in that case scenario.

Conceptually, although the public in the relevant territory will perceive the meanings of the contested sign, as explained above, the other sign has no meaning in that territory. Contrary to the applicant’s allegations, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

The goods and services are identical and similar to a low degree and are directed at both the public at large and professional customers. The degree of attention is considered to be average or high to the extent that professional services in Class 40 are involved.

The signs are visually and aurally similar to an average degree to the extent that they coincide in the larger part of their sole or more dominant verbal elements ‘RIVES’ and ‘RIVET’. As discussed above, they only differ in the last letter of these elements, which is positioned in a non-dominant position and may, therefore, go easily unnoticed or misheard. Account must be 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).

As far as the remaining verbal elements of the contested sign are concerned, as described above, some of these elements (‘DISTILLERY’ and ‘ENGLAND’) will be associated with the concepts of origin or place and therefore, have a limited or no impact on the assessment of likelihood of confusion since they refer to the conflicting goods and services’ specifications. On the other hand, the other differentiating element ‘COPPER’, although distinctive in the contested sign, is still positioned in a secondary place, above the most eye-catching element in the sign ‘RIVET’ and written with smaller letters, whereby it will not be the first element that will grab consumer’s attention. In addition, 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/services covered are from the same or economically linked undertakings. Therefore, it cannot be also excluded that this additional distinctive verbal element may be perceived as a new line of products or services of the same brand.

Furthermore, it should 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). As it was commented above, it cannot be completely ruled out that consumers may refer to the contested sign by its dominant element, ‘RIVET’, and to that extent the aural similarity between the marks is even greater, as they will differ only in their final sounds, which, as previously explained, may be easily overheard, especially taking into account the relevant circumstances from above.

As long as lowly similar services in Class 40 are concerned, it must be recalled that 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). As seen above, there is a high aural similarity between the marks in specific situations, which will outbalance the lesser degree of similarity between the goods and services.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking, in particular on the German-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 1 712 140. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 right examined above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

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

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.