OPPOSITION No B 2 700 261

First Ireland Spirits Company Limited, Mountrath Road, Abbeyleix, Co. Laois, Ireland (opponent), represented by Novagraaf UK, 2nd Floor, Renown House, 33-34 Bury Street, London EC3A 5AR, United Kingdom (professional representative)

a g a i n s t

Dublin Whiskey Distillery Company Limited, 49 Kincora Road, Clontarf, Dublin 3, Ireland (applicant), represented by FRKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 700 261 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 681 977. The opposition is based on European Union trade mark registration No 13 222 799. 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.

1. The goods

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

Class 33:        Spirits; whiskey; liqueurs; cream liqueurs; whiskey flavoured liqueurs.

The contested goods are the following:

Class 30:        Sauces; sauces (condiments); confectionery; chocolate and chocolates; ice cream; coffee, tea, cocoa and artificial coffee; beverages with coffee, cocoa, chocolate or tea base.

Class 33:        Alcoholic beverages; whisky; Irish whiskey.

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 30

The contested goods listed above in Class 30 are essentially various types of foodstuffs/beverages. The opponent’s goods are alcoholic beverages with a relatively high alcohol content and a distinctive flavour. The goods have different natures and purposes. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods is different and they are usually sold in different sections of supermarkets. Therefore, these goods are considered dissimilar.

Contested goods in Class 33

Whisky is identically contained in both lists of goods.

The contested alcoholic beverages include, as a broader category, the opponent’s whiskey. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Irish whiskey is included in the broad category of the opponent’s whiskey. Therefore, they are 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 found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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 earlier mark is a figurative mark, made up of two verbal elements, ‘THE’ and, below it, ‘DUBLIN’S’. They are placed on an oval with a rectangular element attached to the bottom. The oval contains various decorative elements around the edge. This figurative element has a purely decorative nature, since it is a commonplace label in the alcoholic beverage sector. Therefore, it has a low degree of distinctiveness.

Since ‘the’ is a basic English word and ‘Dublin’ is the capital and largest city of Ireland, both the English- and non-English-speaking parts of the public will perceive the verbal elements of the earlier mark as designating the origin of the goods. Therefore, the degree of distinctiveness of this expression must be seen as low.

The opponent claims that ‘DUBLIN’S’ is the dominant element of the earlier mark. However, considering its limited distinctiveness and taking into account the sheer size of the figurative element, the earlier mark has no elements that could be considered clearly more dominant or distinctive than other elements.

The contested sign is a figurative sign containing the verbal elements ‘DUBLIN’S OWN’. Below these elements, there is a figurative element in gold, which resembles a label. This figurative element consists of a harp, with the pillar of the harp depicting an angel with wings, and the elements ‘THE GREAT DISTILLERIES OF DUBLIN CITY’, written in a circle surrounding the image of the harp. Since the figurative element as a whole is more or less the same size as the verbal element, the contested sign has no elements that could be considered clearly more dominant than other elements.

In terms of distinctiveness for the English-speaking part of the public, the elements ‘DUBLIN’S OWN’ will be understood as indicating that the goods in question come from Dublin and no other city. Therefore, the degree of distinctiveness of this expression is low for the English-speaking part of the public. The elements ‘THE GREAT DISTILLERIES OF DUBLIN CITY’ will be perceived as laudatory for the English-speaking part of the public, to the extent that they indicate the quality and the famous origin of the relevant goods. The harp reinforces the concept of Dublin because it is used as the state symbol for Ireland. Therefore, for this part of the public the contested mark has no elements that could be considered clearly more distinctive than other elements, as all elements make reference to the origin or quality of the relevant goods and thus have a low degree of distinctiveness.

The non-English-speaking part of the public will perceive ‘DUBLIN’S’ as referring to the capital and largest city of Ireland, and therefore this element has a low degree of distinctiveness for the relevant goods, as stated above. Parts of this non-English-speaking part of the public, such as the French-, Italian- and Spanish-speaking parts, will also understand the element ‘DISTILLERIES’ as places where alcoholic drinks, etc., are made by distillation, since it is very close to the equivalent words in the official languages of these countries. Therefore, this verbal element will also be perceived by parts of the non-English-speaking public as a reference to the relevant goods. However, some other verbal elements, most notably the word ‘OWN’, which is depicted in much larger letters than the verbal elements underneath, are meaningless and thus more distinctive than the element ‘DUBLIN’S’, which the signs have in common.

It follows from this that the marks are conceptually similar only insofar as they coincide in the word ‘Dublin’s’, which will be perceived as a reference to the origin of the goods in question. They differ in the concept of the other verbal and figurative elements referred to above, to the extent that they are understood. Considering all the above, and in particular the low degree of distinctiveness of the element, ‘DUBLIN’S’, that the signs have in common, the sign are conceptually similar to at most a low degree.

Visually, the signs coincide in ‘DUBLIN’S’. However, taking into account all the different verbal and figurative elements that are of at least equal importance in terms of distinctiveness or dominance as far as the English-speaking part of the public is concerned, the signs are visually similar to at most a low degree. They are even less similar for the non-English-speaking part of the public, for which some verbal elements, in particular the word ‘OWN’, of the contested sign, are more distinctive.

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 ‘DUBLIN’S’. However, the pronunciation differs in the sound of the letters of the additional verbal element of the earlier mark, ‘THE’, and in the additional verbal elements of the contested sign, ‘OWN’ and ‘THE GREAT DISTILLERIES OF DUBLIN CITY’, insofar as the latter elements, which are in much smaller print than the other elements, are pronounced. Further, taking into account that the main verbal elements have different beginnings, ‘THE’ versus ‘DUBLIN’S’, and that ‘DUBLIN’S’ has less impact due to its limited distinctiveness, the signs are aurally similar to at most a low 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question for the relevant public.

5. 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 trade mark on the market, the association which can be made with the used or registered sign and the degree of similarity between the trade mark and the sign 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).

The opponent 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).

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, the previous cases referred to by the opponent are not relevant to the present proceedings, since in the previous decisions – 29/09/2014, B 2 295 650, QUASAR/Q QUASAR; 01/09/2014, B 2 255 811, T-BEAR/BEAR; and 18/12/2006, No 2010/2005-4, THE BUTLERS PANTRY/BUTLERS  – the earlier marks have a normal degree of distinctiveness.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or weak elements.

As concluded above, the earlier mark has a low degree of distinctiveness. The signs are visually, aurally and conceptually similar to at most a low degree. The commonality in an element that will be perceived as indicating the geographical origin of the goods in question is not sufficient for a finding of likelihood of confusion, as the contested sign includes additional elements, and the signs are of different lengths. The clear differences between the signs caused by the additional elements are particularly relevant when assessing the likelihood of confusion between them.

The opponent refers to the principle of imperfect recollection, according to which the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. The Opposition Division notes, however, that, in the present case, an imperfect recollection of the signs cannot rule out the likelihood of confusion between the marks in dispute, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23), especially not in cases where this element has a limited degree of distinctiveness.

Considering all of the above and the overall impressions conveyed by the signs, the differences between the marks mean that the signs can be distinguished effectively, even if the goods, which target the public at large, whose degree of attention is average, are identical. Therefore, there is no likelihood of confusion on the part of the public.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sonia MEHANNEK

Alexandra APOSTOLAKIS

Adriana VAN ROODEN

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.