OPPOSITION No B 2 717 141

Nordbrand Nordhausen GmbH, Bahnhofstr. 25, 99734 Nordhausen/Harz, Germany (opponent), represented by Rotkäppchen-Mumm Sektkellereien GmbH, Lucia Schwab, Matheus-Müller-Platz 1, 65343 Eltville am Rhein, Germany (employee representative)

a g a i n s t

Bulldog Brands AG, Hambleton Bard Building, Cobnar Wood Close, Chesterfield Derbyshire S41 9RQ, United Kingdom (applicant), represented by Ironmonger Curtis LLP, Edmund House 233 Edmund Road, Sheffield  S2 4EL, United Kingdom (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 717 141 is upheld for all the contested goods.

2.        European Union trade mark application No 15 437 379 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 437 379, ‘T34 TURBO’. The opposition is based on German trade mark registration No 302 014 071 996, ‘TURBO’. The opponent invoked Article 8(1) (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark No 302 014 071 996.

In the present case, the date of filing of the contested trade mark is 16/05/2016.

Earlier trade mark No 302 014 071 996 was registered on 06/02/2015. Therefore, the request for proof of use is inadmissible.

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 30:        Yeast.

Class 32:        Syrups for making beverages; preparations for making beverages.

The contested goods are the following:

Class 30:        Yeast; flavourings for 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.

Yeast is identically contained in both lists of goods and services.

The contested flavourings for beverages are used to give some new or additional taste to beverages and, as such, they are similar to the opponent’s syrups for making beverages in Class 32. They are all used in the process of making beverages and to give them a required taste, and they have the same method of use. Furthermore, they might be produced by the same undertakings and they target the same public.

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 are directed at the public at large. The degree of attention is average.

3. The signs

TURBO	T34 TURBO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element ‘TURBO’, consisting the sole element in the earlier sign and the second element in the contested sign, will in German be perceived as the usual short form for ‘Turbomotor’ (turbo engine) or ‘Turbolader’ (turbocharger) (information extracted from Duden Dictionary on 14/09/2017 at http://www.duden.de/suchen/dudenonline/turbo). It is therefore usually associated with the field of engines and motors and refers to high power and speed. It would be understood as such in the relevant language. Furthermore, the word ‘TURBO’ is commonly used in the relevant territory to indicate that something is exceptionally fast, strong or powerful or that it has increased performance. Bearing in mind that one of the relevant goods is yeast, this element is weak for these goods, as alluding to the quality of the goods (to make the chemical process faster). For the rest of the goods, the word ‘TURBO’ is of average distinctiveness.

The element ‘T34’ of the contested sign will be perceived as such; the letter ‘T’ and the number ‘34’, by the relevant public. The other meaning, claimed by the applicant, a Soviet tank, will not be known by the relevant public. As this element is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Visually, the signs coincide in the word ‘TURBO’, which is weak for some goods and distinctive for others, as described above. However, they differ in the first element, ‘T34’, of the contested mark, which is distinctive. Therefore, and bearing in mind that the earlier mark is entirely incorporated in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TURBO’ (weak for some of the goods, as described above), present identically in the signs. The pronunciation differs in the sound of the letter and number ‛T34’ of the contested marks, which are distinctive and have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the meaning of ‘TURBO’ as described above, 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for part of the goods in question, namely yeast in Class 30. The mark has normal degree of distinctiveness for the remaining goods, in relation to which it has no meaning from the perspective of the public in the relevant territory.

5. 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).

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.

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).

In the present case, the goods have been found identical or similar. They target the public at large with an average degree of attention.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

The compared signs are visually, aurally and conceptually similar to an average degree, since the earlier mark is completely included in the contested sign. The marks only differ in the initial element ‘T34’ of the contested mark. Although the beginning of a sign generally has more importance than the ending in the overall impression of that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take into account the overall impression of the signs. This is because the average consumer normally perceives the sign as a whole and does not examine its individual details.

The finding that a mark has limited distinctive character in respect of some of the goods does not preclude a finding that there is a likelihood of confusion. As a whole, the earlier mark has a lower than average degree of distinctiveness for some of the goods. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Considering all the above, 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 German trade mark registration No 302 014 071 996. 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

André Gerd Günther BOSSE

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.