OPPOSITION No B 2 480 971

Radeberger Gruppe Holding GmbH, Darmstädter Landstr. 185, 60598 Frankfurt/Main, Germany (opponent), represented by Mai Rechtsanwälte, Lutterstr. 14, 33617 Bielefeld, Germany (professional representative)

a g a i n s t

Het Anker N.V., Guido Gezellelaan 49, 2800 Mechelen, Belgium (applicant), represented by IP Hills NV, Hubert Frère-Orbanlaan 329, 9000 Gent, Belgium (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 480 971 is upheld for all the contested goods, namely:

Class 32:         Beers; waters, beverages; still water; non-alcoholic beverages; juices; syrups for beverages; fruit-flavored beverages; essences for making beverages; isotonic beverages, not for medical purposes; preparations for making beverages; non-alcoholic malt free beverages, other than for medical use.

Class 33:         Alcoholic beverages except beers; distilled beverages; alcoholic beverages containing fruit; alcoholic bitters; digesters, liqueurs and spirits; alcoholic energy drinks.

2.        European Union trade mark application No 13 404 454 is rejected for all the contested goods. It may proceed for the remaining, non-contested, goods, namely:

Class 29: Cheese; cheese sticks; cheese powder; cheese fondue; cheese mixtures; cheese spreads; soft cheese; white cheese; curd cheese; processed cheese; low fat cheese; ready grated cheese; cheese dips; meats; meat extracts; meat substitutes; meat, preserved; meat spreads; butter; fruit-based snack food; edible oils.

Class 33:         Alcoholic extracts; alcoholic essences.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 404 454, namely against all the goods in Class 32 and some of the goods in Class 33. The opposition is based on German trade mark registration No 1 053 979. 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 must 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 will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark No 1 053 979.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 02/12/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 02/12/2009 to 01/12/2014 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:        Beer

According to Rule 22(3) EUTMIR, the evidence of use must 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 15/02/2016, the Office forwarded the applicant’s letter of 11/02/2016 to the opponent, which submitted proof of use on 14/04/2016. Due to an oversight, the Office did not expressly invite the opponent to file proof of use, nor did it inform the opponent, in accordance with Article 42(2) and (3) EUTMR, that the opposition would be rejected for any goods for which proof of use was not provided.

However, on 05/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/10/2016 to submit evidence of use of the earlier trade mark. The Office informed the parties that it would consider any evidence that had been submitted previously. Therefore, for the assessment of genuine use of the relevant trade mark, the Office will take into account the evidence submitted by the opponent on 14/04/2016.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• An affidavit (Enclosure 1) signed by the opponent’s marketing director on 03/03/2016, in which it is stated that the opponent’s beer is a seasonal product with frequent sales between August and February. Furthermore, the witness statement provides the total sales for the relevant period, 2009-2014, calculated in quantities sold, namely hectolitres, and distributed in both, bottles and barrels, as well as the total sum of the sales estimated in euros. The affidavit is accompanied by two images illustrating samples of a bottle and a barrel, both bearing the trade mark ‘Carolus’ and the verbal elements ‘DER STARKE’, written in smaller letters underneath. It can be seen that the note attached to the barrel is dated 20/11/2014.

• Copies of 40 invoices (Enclosure 2) issued by the opponent’s company to various customers in the territory of Germany, including in Frankfurt am Main, Offenburg, Melsungen, Langen (Hessen), Dreieich, Eschborn and Offenbach am Main. All the invoices contain references to successive sales of items (beer) offered under the trade mark ‘Carolus’ between 16/02/2010 and 28/11/2014. The opponent expressly notes that these invoices represent only ‘exemplary samples’ and not all sales of the opponent’s products throughout the relevant period.

• Copies of a sales leaflet with details of the opponent’s beer range in German (Enclosure 3), a menu insert (Enclosure 4) and a promotional table tent (Enclosure 5), which, according to the opponent’s representative, were distributed to customers in Germany between October 2013 and February 2014. The materials contain illustrations of the opponent’s bottled beer bearing the trade mark ‘Carolus’.

• A leaflet (Enclosure 6) concerning a fundraising event, called ‘Leberecht’, with a minimum contribution of EUR 3, as indicated in the leaflet.

• Extracts from promotional brochures (Enclosure 7) produced by various national retailers of, inter alia, alcoholic and non-alcoholic beverages, as is evident from the addresses referred to and the language of the content (German), in particular retail chains such as Schluckspecht, HERKULES E-center, GLOBUS, Eins-A, Trinkgut, Profi Getränke Shop, etc. The brochures relate to different periods between 2009 and 2014, as can be seen from the dates of validity of the discount prices or from the publication dates. In addition to the trade mark ‘Carolus’, which appears on beer bottles, some of the opponent’s products also bear the designations ‘Doppelbock’ or ‘Binding’.

• Printouts from various internet sources (Enclosures 8 and 9), including one maintained by the opponent (www.binding.de), providing information about the opponent’s beer, as well as ratings and customer reviews, mainly dated between 2009 and 2015. The information has been extracted from www.ratebeer.com, www.bierverkostung.de and www.beeradvocate.com, which are popular independent websites for online rating of beer brands by the public at large.

Place and time of use

The invoices, the promotional brochures and the leaflets show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany, as referred to above. Therefore, the evidence relates to the relevant territory.

Although a few dates on the brochures and on the consumers’ reviews are outside the relevant timeframe, the remaining evidence is dated within the relevant timeframe and the Opposition Division considers that it is sufficient to show use in that period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. Furthermore, the assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). In addition, the Office does not necessarily require a high threshold of proof of genuine use.

In the present case, the documents filed, namely the invoices, the brochures and the printouts from independent sources, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The opponent has submitted 40 copies of invoices to demonstrate sales of beer products bearing the brand ‘Carolus’. The applicant claims in its observations that the opponent’s product is seasonal. However, use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous during the relevant period of five years. It would be sufficient if the use had been made at the very beginning or end of the period, provided that this use was to a sufficient extent (16/12/2008, T-86/07, Deitech, EU:T:2008:577).

In the present case, the invoices demonstrate frequent sales in successive years during the relevant period when the opponent’s beer appears on the market, between August and February, and these sales are considered sufficient to demonstrate the extent of use of the opponent’s mark throughout the relevant period. Furthermore, these examples of sales are corroborated by the total sales figures presented in the witness statement. Although documents produced by the opponent or interested parties have limited probative value, the sales figures provided by the witness, by amount of money and quantity sold still offer some indirect information about the active participation of the opponent’s brand on the market.

In addition, the brochures published by independent parties support the assumption that the brand has a real presence on the market, especially by listing some of the opponent’s distribution channels; contrary to the applicant’s claim that no time indication was given, the Opposition Division notes that the brochures and the dates on the invoices contain references to the relevant period, mentioning dates in, as expected, autumn and winter, when the product is usually sold. In conclusion, the ratings given and the reviews of the brand by independent parties also constitute a meaningful indication of the effective use of the mark throughout the relevant period and for the territory of Germany.

Nature of use

For the sake of completeness, the Opposition Division points out that the opponent’s mark ‘Carolus’ has often been used in conjunction with other verbal elements, as illustrated in the evidence above. Firstly, it should be noted that it is quite common in some market areas for goods to bear not only their individual mark but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. The word ‘Binding’ is the name of the brewery that produces the opponent’s beer, Binding-Brauerei AG, and, moreover, this company is economically related to the opponent itself. The names of particular breweries are a common additional indication that the relevant products bear on their labels.

Furthermore, regarding the German words ‘Doppelbock’ and ‘Der Starke’, as the opponent itself states, the first word is a descriptive term for a particular type of strong beer, and the second expression, meaning ‘The strong one’, alludes to a characteristic of the product, namely that is a strong beer. These words will be understood by the German public with these meanings and less attention will be paid to them than to the distinctive word ‘Carolus’, which will be the only indication of the commercial origin of the goods in question. Consequently, on the basis of these findings, the Opposition Division considers that none of the words referred to above alters the distinctive character of the word mark ‘Carolus’ itself and that the evidence shows that the mark has been used as registered.

Conclusion

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, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark ‘Carolus’ during the relevant period in the relevant territory and in relation to beer (Class 32).

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 32: beer.

The contested goods are the following:

Class 32: Beers; waters, beverages; still water; non-alcoholic beverages; juices; syrups for beverages; fruit-flavored beverages; essences for making beverages; isotonic beverages, not for medical purposes; preparations for making beverages; non-alcoholic malt free beverages, other than for medical use.

Class 33: Alcoholic beverages except beers; distilled beverages; alcoholic beverages containing fruit; alcoholic bitters; digesters, liqueurs and spirits; alcoholic energy drinks.

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 are identically contained in both lists of goods (including using the singular form).

Furthermore, the contested non-alcoholic beverages are similar to a high degree to the opponent’s beer, since the goods have the same purpose, being beverages, and they also have the same relevant public, distribution channels and origins. Furthermore, these goods are usually very much in competition with each other.

The contested waters, beverages; still water; juices; syrups for beverages; fruit-flavored beverages; isotonic beverages, not for medical purposes; non-alcoholic malt free beverages, other than for medical use are classified as non-alcoholic beverages and the same findings apply to those goods: they are similar to a high degree to the opponent’s beer.

The contested essences for making beverages; preparations for making beverages are ingredients and additives that may be used in the production of beers. Therefore, they are similar to a low degree to the opponent’s beer. Although the contested goods target mainly producers of beer rather than the general public, such goods are also made available in the form of homemade beer-brewing kits, in which they form the main ingredients, and, thus, there is a possible overlap in producers, distribution channels and relevant public.

Contested goods in Class 33

Beers are in principle similar to alcoholic beverages (except beers). 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. Beers and alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings.

Therefore, the contested alcoholic beverages except beers; distilled beverages; alcoholic beverages containing fruit; alcoholic bitters; digesters, liqueurs and spirits; alcoholic energy drinks are similar to the opponent’s beer.

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 various degrees are directed at the public at large. The applicant argues that beer experts and beer connoisseurs may constitute a certain part of the relevant public; that is true, but this is not the general rule applied to this category of goods. Furthermore, the degree of attention is average.

3. The signs

Carolus
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word mark written in title case letters. However, in the case of word marks, the word as such is protected and not its written form; therefore, it is immaterial whether the earlier mark is depicted in title, upper or lower case letters. The contested sign is a figurative mark consisting of the verbal elements ‘GOUDEN CAROLUS’ written in gold letters over two lines; the word ‘CAROLUS’ is noticeably larger than the other element. Furthermore, the verbal elements are placed against a black square background and embellished by round gold devices.

The German public will perceive the word ‘Carolus’, present in both signs, as the ancient Latin version of the name ‘Charles’ or ‘Karl’, or as a surname. The verbal element ‘GOUDEN’ in the contested sign is meaningless for the German public. As these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

The contested sign is composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature (the black background and the round devices). Therefore, the verbal elements ‘GOUDEN CAROLUS’ are more distinctive than the figurative elements, as the public will attribute more trade mark significance to them.

Due to its central position and large size, the element ‘Carolus’ in the contested sign is the most eye-catching element.

Visually, the signs coincide in the word ‘Carolus’, comprising the earlier mark and present as the second and more eye-catching of the contested sign’s verbal elements. The signs differ in the additional word ‘GOUDEN’ in the contested sign, as well as in its figurative elements, described above. Therefore, taking into account that the earlier mark is entirely incorporated in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛Carolus’, present identically in both signs. The pronunciation differs in the sound of the additional word of the contested sign, ‘GOUDEN’, which has no counterpart in the earlier mark. Likewise, taking into account that the earlier mark’s sole element is entirely incorporated in the contested sign, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same first name or surname, ‘Carolus’, the signs are considered conceptually 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.

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.

5. Global assessment, other arguments and conclusion

The goods in question are identical or similar to various degrees, and the degree of attention is average.

Account is 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). Furthermore, 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.

The signs are visually, aurally and conceptually similar to an average degree. This is because the contested sign entirely incorporates the earlier mark, ‘Carolus’, which has an average degree of distinctiveness in relation to the goods in question. Consequently, when encountering either of the two marks, a significant part of the public may associate it with the other one due to the coinciding distinctive verbal element, ‘Carolus’, present as a separate element in both marks.

In addition, although consumers might be able to distinguish between the signs, owing to the differentiating word ‘GOUDEN’ in the contested sign, this additional verbal element in itself is not capable of excluding any potential link that consumers may establish. It cannot be excluded that this word might be seen as a house mark or as indicating a new line of the opponent’s products. Consequently, consumers might believe that the trade marks belonged to the same undertaking or economically-linked undertakings, which would lead to a likelihood of association.

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). In the present case, taking into account that both companies operate in the beverages market and bearing in mind the high degree of similarity between the signs in question, the principle of interdependence means that there will be a likelihood of confusion also for the goods found to be similar to a low degree.

The applicant argues that the trade mark applied for has a reputation and, moreover, that it filed a similar Belgian trade mark application in 1959. The applicant supports this claim with various pieces of evidence, in particular Annexes 1, 2 and 3 of its first observations.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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 German trade mark registration No 1 053 979. It follows that the contested trade mark must be rejected for all the contested 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.

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

Steve HAUSER

Manuela RUSEVA

Gueorgui IVANOV

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.