OPPOSITION No B 2 687 054

Restaurantes Cinco Jotas, S.L.U., Calle Fernán Caballero, No. 7, 11500 El Puerto de Santa Maria, Spain (opponent), represented by Fernández-Palacios Abogados, S.L.P., Plaza de la Magdalena, 9 – 4, 41001 Sevilla, Spain (professional representative)

a g a i n s t

Royal Unibrew A/S, Faxe Alle 1, 4640  Faxe, Denmark, (applicant), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000  Århus C, Denmark (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 054 is upheld for all the contested goods, namely 

Class 33:        Alcoholic beverages (except beer); Preparations for making alcoholic beverages; Cider; Potable spirits; Pre-mixed alcoholic beverages, other than beer-based; Alcoholic energy drinks.

2.        European Union trade mark application No 14 979 116 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 979 116, namely against all the goods in Class 33. The opposition is based on European Union trade mark registration No 13 686 191. 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: Alcoholic beverages (except beer); Preparations for making alcoholic beverages; Spirits and liquors; Cider; Wine; Rice alcohol; Bitters; Aperitifs *; Baijiu [Chinese distilled alcoholic beverage]; Edible alcoholic beverages; Low alcoholic drinks; Alcoholic jellies; Mead [hydromel]; Nira [sugarcane-based alcoholic beverage]; Perry; Sake; Wine coolers [drinks]; Alcoholic beverages of fruit; Alcopops; Pre-mixed alcoholic beverages, other than beer-based; Alcoholic beverages containing fruit; Alcoholic energy drinks; Cocktails *; Prepared wine cocktails; Fruit extracts, alcoholic; Rum punch; Wine punch; Alcoholic punches; Gin; Schnapps; Brandy; Anise [liqueur]; Arrack [arak]; Distilled beverages; Spirits [beverages]; Bourbon whiskey; Cachaca; Cream liqueurs; Curacao; Digesters [liqueurs and spirits]; Grappa; Kirsch; Calvados; Peppermint liqueurs; Fermented spirit; Liqueurs; Scotch whisky based liqueurs; Rum; Vodka; Whisky; Malt whisky; Blended whisky; Scotch whisky; Sweet cider; Dry cider; Sparkling wines; Fortified wines; Piquette; Beverages containing wine [spritzers]; Sangria; White wine; Mulled wines; Red wine; Low-alcoholic wine; Cooking wine; Sparkling white wines; Sparkling red wines; Sherry; Vermouth; Alcoholic essences; Alcoholic extracts.

The contested goods are the following:

Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic beverages; Cider; Potable spirits; Pre-mixed alcoholic beverages, other than beer-based; Alcoholic energy drinks.

The contested goods alcoholic beverages (except beer); preparations for making alcoholic beverages; cider; pre-mixed alcoholic beverages, other than beer-based; alcoholic energy drinks are identical since they are listed in the same terms as those of the earlier trade mark.

Potable spirits of the contested mark is included in the broader category of spirits of the earlier mark, and therefore the goods 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 mostly directed at the public at large.  The degree of attention is considered to be average. The goods preparations for making alcoholic beverages are also directed at a professional public who will most probably display an average degree of attention.

3. The signs

NORDÉS	NØRDEN
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 signs have no meaning in relation to the goods since they will be perceived as meaningless by most of the consumers or as allusive to ‘north’ due to the similarity with linguistic equivalents (such as ‘nord’ in German). Even if the contested sign is perceived as ‘nerd’ by the Danish, in all of the given scenarios, the verbal constituents are distinctive.

The Danish letter ‘Ø’ does not exist in the alphabets of any other of the languages of the European Union. Since it represents the letter ‘O’ with a stroke and is positioned between two letters, it is likely to be perceived by most of the consumers as the familiar letter ‘O’. In this respect, the argument of the applicant that it is likely that consumers perceive the letter ‘Ø’ as a figurative element cannot be supported.

Visually, the signs coincide in the common first letter ‘N’ and, the common third, fourth and fifth letters ‘RDE’ and differ in their second and last letter. The accent on ‘E’ visually has a minor impact and does not change the perception of the signs as having the common fifth letter ‘E’. Given the aforementioned possibility that the second letter of the contested trade mark be perceived as ‘O’, it should also be taken into account that it is likely that part of the consumers see the second letters of the compared signs as representing the same letter, as well.

In view of the above identified common elements positioned in identical places, the signs are similar to a high degree.

Aurally, for those for whom the accent on the ‘E’ in the earlier mark and the Ø in the contested mark will merely be referred to as ‘E’ and ‘O’ respectively, the only aural difference lies in their last letters ‘S’ and ‘N’ and the signs would be similar to a high degree. Where the accent and the Ø lead to diverging pronunciation the similarity will be lower hence leading to a similarity of at least an average degree.

Conceptually, except for the Danish, the signs as a whole do not have any meaning for the public in general. For this part of the public the signs are not conceptually comparable, while for the Danish the signs are not conceptually similar due to the different concepts as explained above. The opponent’s argument that ‘Norden’ is the name of a town in Lower Saxony, Germany has been taken into consideration but in view of the small size of the place and the lack of any evidence showing that the town is known to most Germans or more generally – the German-speaking public, the Opposition Division does not agree that the contested sign would be regarded by the relevant public as denoting that specific geographical area.

As mentioned above, due to the similarity with linguistic equivalents in most of the languages of the European Union, it is likely that the signs are perceived as allusive to ‘north’. To that extent, the signs are 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). 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).

This 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).

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).

The contested goods were found to be identical to the goods of the earlier trade mark. They are directed to the public at large and professionals whose level of attention is average. The signs were found to be at most conceptually and aurally similar to an average degree, and visually similar to a high degree.  Furthermore, the earlier trade mark has normal distinctiveness with respect to the goods of Class 33.  

It should also be borne in mind that the relevant goods are mostly 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).

The applicant refers to previous decisions of the Office to support its arguments. However, each case has to be dealt with separately and with regard to its particularities. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In particular, none of these cases considers the same or similar sequences of letters or a situation of the same or similar overlapping letters positioned as in the present case. Unlike in the present case, where the letter in the second (O/Ø) and fifth (É/E) positons will be perceived as being the same letter or its variation, in the cases referred to by the applicant those letters are different ones, e.g. A/U, I/U, B/P (decisions in cases B 2 160 417, B 1 443 417 and R 1229/2014-2). Furthermore, in the present case the signs have distinctive beginnings while in case R 1367/2007-4 referred to by the applicant the initial identical parts of the signs refer to a clearly descriptive concept pertaining to the element ‘MEDI’.    

In the light of the foregoing, also taking into account the principle of interdependence mentioned above, there is a likelihood of confusion

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 368 6191. 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

Vanessa PAGE

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.