OPPOSITION DIVISION
OPPOSITION No B 2 678 343
Globefill Incorporated, 1810 Avenue Road, Suite 300, Toronto, Ontario M5M 3Z2,
Canada (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70
Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative)
a g a i n s t
Prime Wine Sweden AB, Frihamnsgatan 30, SE-115 56 Stockholm, Sweden
(applicant), represented by Hamilton Advokatbyrå KB, Hamngatan 27, 101 33
Stockholm, Sweden (professional representative).
On 11/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 678 343 is upheld for all the contested goods.
2. European Union trade mark application No 14 937 841 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 937 841, ‘Sugar Skull’. The opposition is based on European Union
trade mark registration No 9 671 934, ‘SKULL’. The opponent invoked Article 8(1)(b)
and 8(5) EUTMR. However, Article 8(5) EUTMR was subsequently withdrawn by the
opponent in its observations of 11/10/2016.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 678 343 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 33: Distilled alcoholic beverages, namely, vodka.
The contested goods, after the restriction filed by the applicant, are the following:
Class 33: Wine.
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.
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The term ‘namely’, used in the opponent’s list of goods and services to show the
relationship of individual goods and services with a broader category, is exclusive
and restricts the scope of protection only to the specifically listed goods and services.
Contested goods in Class 33
Contrary to the applicant’s arguments, the contested wine is similar to the opponent’s
vodka. Although their production processes are different, these goods 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. Furthermore, they can
originate from the same undertakings and they are in competition.
b) 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 similar are directed at the public at large.
Contrary to the applicant’s argument, the degree of attention is considered average.
Decision on Opposition No B 2 678 343 page: 3 of 5
c) The signs
SKULL Sugar Skull
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.
The element that the signs have in common, ‘SKULL’, is meaningful in part of the
relevant territory, namely the countries where English is spoken. Consequently, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
English-speaking part of the public.
Both signs are word marks, so it is irrelevant whether they are depicted in upper or
lower case. The element ‘SKULL’, present in both marks, will be associated with ‘the
bone structure of a human that forms the head and surrounds and protects the brain’.
This element is distinctive for the relevant goods.
The word ‘SUGAR’ of the contested mark will be perceived as a ‘sweet substance,
often in the form of white or brown crystals, made from the juices of various plants,
used in cooking or to make tea, coffee, etc. sweeter’. This element is weak for the
relevant goods, as the public may perceive it as alluding to the fact that the relevant
goods (alcoholic beverages) are sweet.
Visually and aurally, the signs coincide in the distinctive element ‘SKULL’, whereas
they differ in the additional, less distinctive, element ‘SUGAR’ of the contested mark.
They 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. As the signs coincide in the concept of the distinctive
element ‘SKULL’, which appears in both signs, and taking into account the weak
character of the word ‘SUGAR’ of the contested sign, the signs are conceptually
highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 678 343 page: 4 of 5
d) 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 mark has been extensively used and enjoys an
enhanced scope of protection. However, in its observations of 11/10/2016, the
opponent withdrew this 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.
e) 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).
The goods are similar and the earlier mark enjoys an average degree of
distinctiveness in relation to the relevant goods. The signs are visually and aurally
similar to an average degree on account of the coinciding element ‘SKULL’, which is
the only element of the earlier mark and the most distinctive element of the contested
sign. Furthermore, the signs are conceptually highly similar.
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.
In the present case, it is highly conceivable that the relevant consumer will perceive
the contested mark 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).
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 9 671 934. It follows that the contested trade mark
must be rejected for all the contested goods.
Decision on Opposition No B 2 678 343 page: 5 of 5
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Benjamin Erik WINSNER Begoña URIARTE
VALIENTE
Boyana NAYDENOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.