OPPOSITION No B 2 706 813
La Zaragozana S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)
a g a i n s t
Brauerei Gusswerk GmbH, Römerstrasse 3, 5322 Hof bei Salzburg, Austria (applicant), represented by Kliment & Henhapel Patentanwälte OG, Singerstr. 8, 1010 Wien, Austria (professional representative).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 706 813 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 106 537, namely against all the goods in Classes 30 and 32. The opposition is based on Spanish trade mark registration No 1 674 949. 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
The goods on which the opposition is based are the following:
Class 32: Beers.
The contested goods are the following:
Class 30: Beer vinegar.
Class 32: Beer; Beer wort; Imitation beer; Beer-based cocktails; Lagers; Non-alcoholic beer; Flavored beers; Beer and brewery products; Coffee-flavored beer; Beer-based beverages; Low alcohol beer; Non-alcoholic beer flavored beverages; Black beer [toasted-malt beer].
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 beer vinegar is similar to a low degree to the opponent’s beers (09/06/2010, T-138/09, RIOJAVINA, EU:T:2010:226, § 34-40 by analogy). Even though vinegar, unlike beer, is not a drink, the fact remains that both products can be used in food preparation, so their purposes overlap. In addition, the vinegar in question is obtained by fermentation of beer, so there is a functional complementarity between the two. Finally, they are likely to be produced by the same undertakings.
Contested goods in Class 32
Beer(s) (listed twice in the applicant’s list) is identically contained in both lists of goods despite the slight difference in their wordings.
The contested lagers; flavored beers; coffee-flavored beer; low alcohol beer; black beer [toasted-malt beer] are different kinds of beers. As a result, they are included in the opponent’s broad category of beers, to which they are, therefore, identical.
The contested imitation beer; non-alcoholic beer; non-alcoholic beer flavored beverages are highly similar to the opponent’s beers, as they have the same purpose. In addition, they can coincide in producer, end user and distribution channels. Furthermore, they are in competition.
The contested beer-based cocktails; beer-based beverages are also highly similar to the opponent’s beers. The opponent’s beers and the contested beer-based cocktails; beer-based beverages have the same purpose and usual producers and they are found on the same or nearby shelves in shops. Finally, to the extent that they are interchangeable, they are in competition.
The contested beer wort; brewery products share some similarity with the opponent’s beers. The contested goods and opponent’s beers differ in nature, purpose and end users, since the contested goods are semi-finished products likely to be used in the beer production process. However, they coincide in their usual producers and they are complementary. Therefore, they are similar to a low degree.
- 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 and similar to varying degrees are directed at the public at large The degree of attention will vary between low and average (28/04/2016, T-803/14, B’lue, EU:T:2016:251, § 20; 26/04/2016, T-21/15, Dino, EU:T:2016:241, § 20).
- The signs
Earlier trade mark
The relevant territory is Spain.
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, consisting of the words ‘AMBAR’ and ‘GREEN’ linked with a hyphen. The contested sign is a word mark composed of the words ‘GREEN’ and ‘BETTY’ separated by a space.
The word ‘AMBAR’ is a Spanish word meaning ‘amber’, which is a hard translucent fossilised resin originating from extinct coniferous trees of the Tertiary period, typically yellowish in colour. Although not as commonly used as in English, it can also be used in Spanish to designate a colour, that is, a yellowish shade of orange (21/01/2014, R 1284/2012-5, GREEN’S (fig.) / AMBAR-GREEN, § 21).
According to the General Court of the European Union, ‘the word “AMBAR” is not a term widely used in Spain to describe beer, although it refers to a fossilised resin of a yellowish colour similar to that of beer’ (21/05/2015, T-197/14, GREEN’S, EU:T:2015:313, § 54). Therefore, the conclusion is drawn that it is distinctive for the relevant goods in the perception of the relevant Spanish public.
By contrast, the coinciding verbal element ‘GREEN’ is a basic English word referring to the colour between blue and yellow on the spectrum of visible light. In the food market and in marketing it relates, in general, to organic products (21/05/2015, T-197/14, GREEN’S, EU:T:2015:313, § 54). Therefore, this word could be perceived, by at least the part of the Spanish public that has a basic knowledge of English, as a type of organic, environmentally friendly beers, drinks and preparations made from beer and, thus, as a weak element in the earlier mark (31/10/2016, B 2 615 055, GREEN FLUTE).
It follows from all the above that the coinciding element ‘GREEN’ has a weak distinctive character in the perception of part of the relevant public, whereas it is of average distinctiveness for the rest of the relevant public.
Therefore, for part of the public, the element ‘AMBAR’ is the most distinctive element of the earlier mark, whereas for the remaining part of the public the earlier mark has no element that could be considered clearly more distinctive than other elements.
On the other hand, the element ‘BETTY’ of the contested sign will be perceived either as meaningless or as a given name, that is, a common diminutive for the name ‘Elizabeth’. In either case, it is distinctive.
Therefore, for part of the public, ‘BETTY’ is the most distinctive element of the contested sign, whereas for the remaining part of the public the contested sign has no element that could be considered clearly more distinctive than other elements.
Visually, the signs coincide in the word ‘GREEN’. However, they differ in ‘AMBAR’ of the earlier mark versus ‘BETTY’ of the contested sign.
The signs further differ insofar as the coinciding element, ‘GREEN’, is placed in different positions in the signs, that is, as the second element in the earlier mark and as the first element in the contested sign, as well as in the hyphen that separates the two elements of the earlier mark.
Since the signs have different beginnings and their verbal elements are in different orders, they are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GREEN’. However, it differs in the sound of the differing elements, ‘AMBAR’ versus ‘BETTY’.
The marks also differ aurally in their rhythms and intonations, as the coinciding element ‘GREEN’ is the second element in the earlier mark but the first in the contested sign.
Therefore, the signs are aurally similar to a low degree.
Conceptually, for the part of the public that understands only the element ‘AMBAR’ of the earlier mark, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the part of the public that will understand the coinciding element ‘GREEN’, the signs are dissimilar because they overlap in a weak element, whereas the differentiating elements, namely ‘AMBAR’ in the earlier mark and – for a part of the public – ‘BETTY’ in the contested sign, convey different distinctive concepts (a colour versus a name or no concept). Therefore, the overlap has no impact on the comparison of the signs.
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.
According to the opponent, the earlier trade mark ‘AMBAR is a well-known Spanish brand of beer’. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The evidence consists of the following documents:
- Annex 1: an undated screenshot of the opponent’s website www.ambar.com showing a picture of a bottle of beer labelled ‘AMBAR GREEN’, along with a description in English of its characteristics.
- Annex 2: undated screenshots of the opponent’s website www.ambar.com showing pictures of bottles of beer labelled ‘AMBAR APTA PARA CELÍACOS’, ‘AMBAR ESPECIAL’, ‘AMBAR EXPORT’, ‘AMBAR 1900’, ‘AMBAR NEGRA’, ‘AMBAR CAESAR’, ‘AMBAR 0,0’, ‘AMBAR LEMON’ and ‘AMBAR MANZANA’ along with descriptions of them in English.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a high degree of distinctiveness through its use in Spain for the goods in Class 32 for which it is registered.
The opponent did not file any direct evidence (e.g. a survey on the mark’s recognition that supports the finding of brand awareness among the public) or sufficient indirect evidence (e.g. evidence of high turnover, high advertising expenditures or extensive press coverage) to substantiate the enhanced distinctiveness of the earlier mark. Therefore, this claim is rejected as unfounded.
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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, at least for a part of the public, as stated above in section c) of this decision.
- 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).
The goods are identical or similar to various degrees. The degree of attention varies from average to low.
The signs coincide in the verbal element ‘GREEN’, although it is placed in different positions. This element is weak in relation to the relevant goods for the part of the public that understands this word.
The signs have significant differences, namely the earlier mark begins with the distinctive element ‘AMBAR’ followed by a hyphen, whereas the contested sign includes the additional distinctive element ‘BETTY’. The differing elements in the signs are clearly sufficient to exclude any likelihood of confusion between the marks.
A trade mark consisting of various elements cannot be regarded as being similar to another trade mark which is similar to one of the components in such a trade mark, unless that component forms the dominant element within the overall impression created by the complex mark. That is the case only where the component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 33).
This is clearly not applicable in this case, since the remaining component of the contested sign is not negligible. Therefore, the similarities between the marks are not sufficient to counteract the dissimilarities between them and to lead to a likelihood of confusion on the part of the public. This is despite the fact that the goods are identical or similar to various degrees. There are important differences between the signs that outweigh the similarities and, consequently, consumers will be able to safely distinguish between them.
Moreover, the first parts of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the dissimilar first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
For the sake of completeness, the Opposition Division notes that the opponent argued that the trade marks shown in Annexes 1 and 2 are all characterised by the presence of the same word component, ‘AMBAR’, and that they constitute a ‘family of marks’ or ‘marks in a series’ in which ‘AMBAR’ would correspond to the ‘house-mark’ and the other element would vary depending on the specific characteristics of the various kinds of beer that it produces.
In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.
In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.
When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.
In the present case, the opponent has based its opposition on a single earlier trade mark, ‘AMBAR-GREEN’, and it failed to prove that it uses a family of ‘AMBAR’ marks in the same fields as those covered by the contested sign. Therefore, this claim is rejected.
The opponent also 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.
As regards the decision of 29/01/2003, B 341 216, WILLIAM / PIRCHER WILLIAMS, the Opposition Division notes at the outset that, contrary to the presentation made thereof by the opponent, the earlier mark was a word mark, ‘WILLIAM’, and the contested sign was a figurative mark, ‘PIRCHER WILLIAMS’, in which ‘WILLIAMS’ was considered dominant. Therefore, the earlier mark was entirely included in the dominant element, ‘WILLIAMS’, of the contested sign, which is not the case here.
In the same line, it is noted that in the decision that the opponent quotes as being issued in case R 9021/2010-2 – which is in fact 20/05/2011, R 0902/2010-2, FORMULA (Fig.) / El Corte Inglés fórmul@ JOVEN (Fig.) et al. – the contested sign’s single element was identical to the earlier mark’s most distinctive and dominant element, which is not the case here.
Concerning the decisions of 23/02/2010, B 1 467 267, CELLULIGHT / ELMIPLANT CELLULIGHT, and 22/02/2010, B 1 153 701, FERRERO GARDEN / GARDEN, the Opposition Division notes that the marks in question were identical in one of their word elements and the other marks did not include any word element other than the coinciding one. That is also not the case here, since the contested sign includes not only the coinciding element, ‘GREEN’, but also another element, which, moreover, is distinctive, namely ‘BETTY’.
Finally, as regards the decision of 18/05/2010, B 1 479 932, AMBAR EXPORT / EXPORT, in contrast to the present case, in which ‘GREEN’ cannot be held to be dominant, the element ‘EXPORT’ was considered dominant. Therefore, this case is also not relevant to the present proceedings.
In any event, it has to be recalled that, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In the present case, even for the part of the public for which it is distinctive, the mere fact that the signs coincide in the element ‘GREEN’ is not sufficient for a finding that there is a likelihood of confusion, since, in particular, the differing elements, ‘AMBAR’ and ‘BETTY’, are also distinctive and the coinciding element has a different position in each sign.
In view of the above, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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
Carmen SÁNCHEZ PALOMARES
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.