OPPOSITION No B 2 787 722

Distillerie Warenghem SAS, Boutill, 22300 Lannion, France (opponent), represented by Cabinet Le Guen Maillet, 5, place Newquay, B.P. 70250, 35802 Dinard Cédex, France (professional representative)

a g a i n s t

Winzergenossenschaft Bötzingen Eg, Hauptstraße 13, 79268 Bötzingen, Germany (applicant), represented by Csaba Láng, Kaiser-Joseph-Str. 255, 79098 Freiburg i. Br., Germany (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 787 722 is upheld for all the contested goods.

2.        European Union trade mark application No 15 625 321 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 15 625 321 in Classes 32 and 33. The opposition is based on European Union trade mark registration No 10 312 122. 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 32:        Beers, Mineral and aerated waters, fruit drinks and fruit juices. 

Class 33:        Whisky, spirits, liqueurs. 

The contested goods are the following:

Class 32:        Non-alcoholic beverages; alcohol free wine.

Class 33:        Alcoholic beverages (except beer); spirits and liquors; wine; alcoholic carbonated beverages, except beer; edible alcoholic beverages; low alcoholic drinks; aperitifs.

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 include, as a broader category the opponent’s mineral and aerated waters. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested alcohol free wine is similar to the opponent´s fruit drinks and fruit juices as they have the same purpose. Also, these goods all belong to the same category of non-alcoholic drinks intended for the general public and coincide in the distribution channels since they can be served in restaurants and are sold in the same section in supermarkets and grocery stores.

Contested goods in Class 33

The contested alcoholic beverages (except beer), include as a broader category the opponent´s whisky. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Spirits and liquors are identically contained in both lists of goods.

The contested wine is similar to whisky as they have the same nature. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are sold 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 different subcategories. Furthermore they are in competition.

The contested alcoholic carbonated beverages, except beer; edible alcoholic beverages; low alcoholic drinks; aperitifs overlap with the opponent´s liqueurs. Therefore, they 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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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 earlier right is a figurative mark that consists of the letters ‘WB’ in a rather standard bold font, the letter ‘W’ is in white colour between two white lines and inside a black square. The letter ‘B’ is in black colour between two grey lines inside a white square. As the earlier right is composed of a distinctive verbal element with no meaning, and a less distinctive figurative element of a purely decorative nature, the verbal element ‘WB’ is more distinctive than the figurative element. Also, the earlier right has no elements that could be considered clearly more dominant than other elements.

The contested sign consists of a bear holding a glass of beverage and below it the letters ‘WB’ with a black line above these letters and below a thicker black line. The figurative element of the bear is distinctive and the glass of beverage is a weak element, bearing in mind the goods covered by the contested sign. The verbal element ‘WB’ has no meaning for the relevant public and is, therefore, distinctive. The contested sign has no elements that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the distinctive verbal element ‘WB’. However, they differ in the figurative elements of both signs which, as stated above, are the less distinctive features in the earlier mark and will have a lesser impact on the consumer than the verbal elements in both signs.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛WB’, present identically in both signs and which, as stated above, are distinctive.

Therefore, the signs are aurally identical.

Conceptually, although the public in the relevant territory will perceive the figurative element of the contested sign as a bear holding a glass of beverage, the earlier right has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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

In the present case the goods were found identical or similar and the degree of attention for such relevant goods is of an average degree. In addition, the signs were found aurally identical, visually similar to an average degree and conceptually not similar.

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 identity found 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). These considerations come into play in the finding of likelihood of confusion.

Consequently, although the contested sign has a distinctive figurative element, for the reasons explained above, the Opposition Division finds that a likelihood of confusion still exists, as the coinciding verbal element ‘WB’ plays an independent distinctive role in both signs.

For the reasons stated above, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 312 122. 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

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Benoit VLEMINCQ

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.