OPPOSITION No B 2 678 475
Grupo Jerezano de Distribución de Alimentación y Bebidas, S.L., Catalpa, 6, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
St Patrick’s Distillery Ltd, 105 St Patrick’s Mills, Douglas, Cork, Ireland (holder).
On 10/03/2017, the Opposition Division takes the following
1. Opposition No B 2 678 475 is upheld for all the contested goods.
2. International registration No 1 252 775 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 252 775. The opposition is based on Spanish trade mark registration No 2 167 597. 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 33: Alcoholic beverages (except beers).
The contested goods are the following:
Class 33: Alcoholic beverages (except beers).
Alcoholic beverages (except beers) are identically contained in both lists of goods.
- 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 directed at the public at large. The degree of attention is considered to be average.
- 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 trade mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form.
The earlier trade mark consists of two letters, ‘ST’, followed by a full point and the male name ‘PATRICK’. The letters ‘ST’ followed by a full point is an abbreviation of the English word ‘saint’. Although it is not ruled out that some of the relevant Spanish-speaking public could associate ‘ST. PATRICK’ with ‘San Patricio’ in Spanish, for the majority of the relevant public the letters ‘ST’ will not have any meaning and the word ‘PATRICK’ will be perceived as a male name.
The distinctiveness of the elements of the earlier mark must be considered average, irrespective of whether the Spanish-speaking public will recognise the semantic content of only ‘Patrick’, as a male name, or Saint Patrick, because it is not descriptive, laudatory or allusive for the relevant goods.
The contested sign is a figurative mark consisting of the word elements ‘ST PATRICK’S’ and ‘DISTILLERY’ set over two lines in upper case white letters on a black background within a frame of brown/golden decorations and embellishments. The word element ‘ST PATRICK’S’ is depicted in a slightly stylised typeface and there is a decoration at the base of the letter ‘T’. The word ‘DISTILLERY’ is also in upper case letters but of a smaller size than those of the word element ‘ST PATRICK’S’ and in a standard typeface.
The word element ‘ST PATRICK’S’ in general will be perceived by the relevant public as described above for the earlier mark, ‘ST. PATRICK’, with the only difference being an apostrophe and the letter ‘S’, which will not convey any particular meaning for the relevant Spanish-speaking public and, as such, would be distinctive; however, because of their position at the end of the verbal element ‘ST PATRICK’S’, the visual separation and the fact that they are just a punctuation sign and one letter, they will play only a minor role in the overall perception of the sign. The word ‘DISTILLERY’, although it is an English word, will be perceived by the Spanish-speaking public as referring to the Spanish word ‘distillería’, especially taking into account that consumers will see it on alcoholic beverages. Therefore, it will create a direct association with distilled beverages (spirits, liquor, etc.) and is considered non-distinctive in relation to the relevant goods in Class 33, alcoholic beverages (except beers). Taking into consideration that the figurative elements that are decorations and embellishments are of a more decorative nature and therefore barely capable of serving as a badge of origin, the verbal element ‘ST PATRICK’S’ is considered to be the most distinctive element in the contested sign.
The contested sign does not have any element that could be considered more dominant than other elements.
Visually, the signs coincide in the sequence of letters ‘ST PATRICK’. However, the signs differ in the apostrophe, the letter ‘S’, the word ‘DISTILLERY’ and in the figurative decorations and embellishments in the contested sign. The signs also differ in the full point after the letters ‘ST’ in the earlier mark, which is a very small element and, therefore, it will not have a significant influence on the visual perception of the signs.
The figurative embellishments in the contested sign are of a decorative nature and have less relevance than the word element ‘ST PATRICK’, which is easily recognisable and legible, and is identically contained in both signs. The apostrophe and letter ‘S’ in the contested sign appear at the end of the word element ‘ST PATRICK’S’ and are visually less striking than the preceding word element ‘ST PATRICK’, considering that consumers generally tend to focus on the first element of a sign when 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. The word ‘DISTILLERY’ is non-distinctive for the contested goods and will not distract consumers’ attention from the element ‘ST PATRICK’S’, especially since that word is the most distinctive element of the contested sign.
Therefore, the signs visually are similar to an above average degree.
Aurally, the element ‘ST PATRICK’ will be pronounced identically in both the earlier trade mark and the contested sign. The difference in the pronunciation lies only in the ‘S’ sound at the end of ‘ST PATRICK’ and in the word ‘DISTILLERY’ in the contested sign, which does not appear in the earlier trade mark. However, the additional ‘S’ sound at the end of the verbal element ‘ST PATRICK’S’ will not result in a noticeably different pronunciation from that of the earlier mark, and the word ‘DISTILLERY’, being non-distinctive in relation to the goods in question, will not create any significant differences, since it is most likely that the relevant consumers will refer to the mark verbally as ‘ST PATRICK’S’ rather than indicating its non-distinctive element.
Therefore, the signs are similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the signs coincide in the concept of their distinctive verbal elements, they are conceptually similar to a high degree.
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.
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 degree of distinctiveness of the earlier mark must be seen as normal.
- 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).
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).
It should be borne in mind that the relevant goods are 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).
In the present case, the goods at issue are identical and target the public at large with an average degree of attention. The distinctive element, ‘ST PATRICK’, in both signs will be pronounced and perceived identically by the relevant Spanish-speaking consumers; the marks differ in their secondary elements and in the overall graphic composition of the contested sign. Therefore, as explained in section c), the signs are considered visually similar to an above average degree, and aurally and conceptually they are similar to a high degree. The degree of distinctiveness of the earlier mark is average.
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.
It is important to note that the whole earlier trade mark (with the exception of a full point) is included in the contested sign. Although there are some visual differences between the signs due to the stylisation of the contested sign, a likelihood of confusion still exists, as the differences between the distinctive verbal elements of the conflicting signs are minor (punctuation marks and one additional letter ‘S’). The other differing verbal element of the contested sign, ‘DISTILLERY’, is non-distinctive, and the figurative elements are of a more decorative nature and neither of them is able to create significant differences between the marks under comparison. Therefore, the Opposition Division is of the opinion that the differences found between the marks are not sufficient to counteract their similarities owing to the coinciding element, ‘ST PATRICK’, and that, consequently, the public could believe that the identical goods come from the same undertaking 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 public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 167 597. It follows that the contested trade mark must be rejected for all the contested goods.
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 holder 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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.