OPPOSITION No B 2 546 128

Constellation Brands U.S. Operations, Inc., 235 North Bloomfield Road, Canandaigua, New York 14424, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Josef Drathen GmbH & Co. KG, Fliehburgstraße 23, 56856 Zell, Germany (applicant), represented by Jörg Wagner, Monaiser Str. 21, 54294 Trier, Germany (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 546 128 is upheld for all the contested goods.

2.        European Union trade mark application No 13 874 151 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 874 151. The opposition is based on, inter alia, European Union trade mark registration No 1 342 336. 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 European Union trade mark registration No 1 342 336.

1. The goods

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

Class 33:        Whisky; alcoholic beverages.

The contested goods are the following:

Class 32:        Non-alcoholic beverages; preparations for making beverages.

Class 33:        Alcoholic beverages (except beer); preparations for making alcoholic beverages.

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

The contested non-alcoholic beverages, such as fruit drinks, fruit juices, mineral and aerated waters on the one hand, and the opponent’s alcoholic beverages in Class 33 on the other, are all beverages, often sold side by side both in shops and bars and on drinks menus. These goods target the same relevant public and may be in competition. Therefore, they are similar to a low degree.

The contested preparations for making beverages are powders or concentrated liquids that are mixed with water, milk or juice to make beverages. They can have the same distribution channels, relevant public and method of use as the opponent’s alcoholic beverages in Class 33. Therefore, they are similar to a low degree.

Contested goods in Class 33

The contested alcoholic beverages (except beer) are included in the broader category of the opponent’s alcoholic beverages. Therefore, they are identical.

The contested preparations for making alcoholic beverages refer to preparations containing alcohol and aromatic essences or extracts obtained from a plant, spice, herb or fruit, used as flavouring ingredients by the manufacturers of beverages. They can have the same distribution channels, relevant public and producers as the opponent’s alcoholic beverages in Class 33. Therefore, they are similar to a low degree.

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 at business customers with specific professional knowledge or expertise in the beverage-making industry.

The degree of attention is considered average.

3. The signs

BLACK VELVET	Pink Velvet
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

All the elements of the conflicting signs are meaningful and have, therefore, an impact on the conceptual perception of the signs in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both signs under comparison are word signs. In this regard, it should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.

The element ‘VELVET’, which the signs have in common, will be understood as ‘a fabric of silk, cotton, nylon, etc., with a thick close soft usually lustrous pile’ (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/velvet). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive to an average degree.

The elements ‘BLACK’ and ‘Pink’ both refer to the names of colours (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/black and https://www.collinsdictionary.com/dictionary/english/pink). Since neither of these colours is commonly used to describe certain characteristics of the relevant goods, for example alcoholic or non-alcoholic beverages, both elements have a normal degree of distinctiveness for these goods.

Visually and aurally, the signs coincide in the word/sound ‘VELVET’. Given that they each consist of two verbal elements and three syllables, they also have the same rhythm and intonation.

However, the signs differ in the word/sound ‘BLACK’ of the earlier mark and in the word/sound ‘Pink’ of the contested sign.

Considering all the above, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks’ individual elements; the meaning of each sign as whole is nothing more than the sum of the parts mentioned above.

As both signs will be associated with a type of fabric, although in the case of the earlier mark in black and in the case of the contested sign in pink, 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 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 relevant goods from the perspective of the English-speaking 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 (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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the public in the relevant territory. The relevant public consists of the public at large and business customers.

As concluded above, the contested goods are partly identical and partly similar to a low degree to the opponent’s goods; the degree of attention is average and the earlier mark has an average degree of inherent distinctiveness.

The conflicting signs are similar to an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. This is, in particular, justified by the fact that the verbal element ‘VELVET’, which the signs have in common, plays an independent and distinctive role in both signs.

The Opposition Division is of the opinion that the differences between the signs, as indicated above, are not sufficient to counteract their similarities, also for the reasons explained below.

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking under the ‘VELVET’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking part of the public in the relevant territory, and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 342 336. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested sign must be rejected for all the contested goods, even for the contested goods that are similar only to a low degree to the opponent’s goods. This is because, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods is clearly offset by the average degree of similarity between the signs.

As the earlier right, namely European Union trade mark registration No 1 342 336, leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Chantal VAN RIEL

Martin MITURA

Vanessa PAGE

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.