OPPOSITION No B 2 675 836

Brasserie Haacht, in het Nederlands, Brouwerij Haacht Naamloze vennootschap, Provinciesteenweg 28, 3190 Boortmeerbeek, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

IQ 4 YOU GmbH, Geislinger Str. 61, 73337 Bad Überkingen, Germany (holder)

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 836 is partially upheld, namely for the following contested goods:

Class 32: Beer and brewed beverages; preparations for making beverages.

2.        International registration No 1 263 254 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 263 254, namely against some of the goods in Classes 32 and 33. The opposition is based on, inter alia, Benelux trade mark registration No 87 126. 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 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 Benelux trade mark registration No 87 126.

1. The goods

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

Class 32: Beers.

The contested goods are the following:

Class 32: Beer and brewed beverages; preparations for making beverages.

Class 33: Preparations for making alcoholic beverages.

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

Beer is identically contained in both lists of goods.

The contested brewed beverages include, as a broader category, the opponent’s beers which are produced by brewing. 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 preparations for making beverages include ingredients and additives used in the production of beer. They are similar to a low degree to the opponent’s beers. Although the contested goods target mainly producers of beer rather than the general public, such goods are also made available in the form of beer home brewing kits, in which they form the main ingredients. Thus, there is a possible overlap in producers, distribution channels and relevant public.

Contested goods in Class 33

The opponent contends that the contested preparations for making alcoholic beverages are similar to the opponent’s beers in Class 32 as they are claimed to have the same nature and because they can coincide in producer, end user and distribution channels.

However, contrary to the opponent’s allegations, the contested preparations for making alcoholic beverages and the opponent’s beers do not have the same nature. In addition, they differ in purpose and method of use; they are not complementary or in competition. Moreover, these goods are not normally produced by the same companies or sold through the same distribution channels. Therefore, the Opposition Division finds these goods to be dissimilar.

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 or similar to a low degree are directed at the public at large and also at a professionals working in the beverage industry.

The degree of attention is considered to be average.

3. The signs

ADLER	Goldadler
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

The earlier mark is the word mark ‘ADLER’.

The German-speaking-public in the relevant territory will perceive the word ‘ADLER’ as referring to the German word for ‘eagle’, which has no particular meaning in relation to the goods at issue and is, therefore, distinctive.

The contested sign is the word mark ‘Goldadler’. In the case of word marks, it is the word as such that is protected and not its written form.

Although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

Therefore, in the present case, the Opposition Division finds it appropriate to first focus the comparison of the signs on the German-speaking part of the relevant public.

For this part of the public, ‘Gold’ has the same meaning in German as the English word ‘gold’ and ‘adler’ means ‘eagle’. Therefore, the contested sign will be broken down into the elements ‘Gold’ and ‘adler’.

Therefore, the above considerations regarding the perception and the distinctiveness of the word ‘ADLER’ in the earlier mark apply equally to this element of the contested sign.

As regards the first element of the contested sign, ‘Gold’, it will be associated with ‘superior quality’ as the colour, or word, gold is typically used in trade to designate goods of higher quality. Therefore, the word ‘Gold’ of the contested sign will be perceived as a weak element referring to the superior quality of the relevant goods intended to be offered under the sign.  

Visually, the signs are similar to the extent that they coincide in the verbal element ‘ADLER’. However, they differ in the additional verbal element ‘Gold’ at the beginning of the contested sign. Nevertheless, for the reasons outlined above, this additional element is weak and will therefore have less impact on the visual impression produced by the sign.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛ADLER’, present identically in both signs. The pronunciation differs in the sound of the additional element ‛Gold’ at the beginning of the contested sign, which is however a weak element that will be given less weight.  

Therefore, the signs are also aurally similar to an above average degree.

Conceptually, the word ‘ADLER’ will be associated by the public in the relevant territory with the semantic content referred to above. Consequently, both signs will be associated with the same concept evoked by the word ‘ADLER’ and the additional element ‘Gold’ in the contested sign will merely be perceived as alluding to a superior quality. Therefore, the signs are conceptually highly 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.

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 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

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).

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.

In the present case, the relevant goods are identical, similar to a low degree or dissimilar and the degree of attention of the relevant public is average. The earlier mark has a normal distinctiveness and the signs are visually and aurally similar to an above average degree and conceptually highly similar.

It should also be borne in mind that the coinciding element of the marks, ‘ADLER’, is the most distinctive element of the contested sign and that the additional element ‘Gold’ is only of a weak distinctive character merely alluding to a superior quality of the contested goods. Therefore, even if the difference between the marks is present at the beginning of the contested sign, where consumers normally pay more attention, consumers that encountered the conflicting products in Class 32, even those that are only similar to a low degree, bearing the contested sign are still likely to believe that they are a new line of products with a superior quality originating from the opponent or from an economically linked undertaking.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking public in the Benelux. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application.

Therefore, the opposition is partially well founded on the basis of the opponent’s Benelux trade mark registration No 87 126. It follows that the contested trade mark must be rejected for the contested goods found to be identical or similar to a low degree.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

International trade mark registration No 218 256 for the word mark ‘ADLER’ designating France, registered for beers in Class 32.

Since this mark is identical to the one which has been compared and covers the same goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Milda CERNIAUSKAITE

Sam GYLLING

Begoña URIARTE VALIENTE

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.