ALMOST FAMOUS | Decision 2717273

Date Published: Sep 22, 2017

OPPOSITION No B 2 717 273

Cervezas Moritz S.A., Ronda San Antonio, 39, 08011 Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

BrewDog plc, Balmacassie Commercial Park, Ellon, Aberdeenshire AB41 8BX, United Kingdom (applicant), represented by Lawrie IP Limited, The Hub, Pacific Quay, Pacific Drive, Glasgow G51 1EA, United Kingdom (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 717 273 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 278 492 ‘ALMOST FAMOUS’. The opposition is based on Spanish trade mark registration No 2 988 508. 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 sparkling waters, and other non-alcoholic drinks; Fruit drinks and juices; Syrups and other preparations to make beverages.

The contested goods are the following:

Class 32: Beer and brewery products; craft beer; lager, stout, ale, pale ale, porter, pilsner, bock, saison, wheat beer, malt beer, non-alcoholic beer, low-alcohol beer, flavoured beers; processed hops for use in making beer; malt wort; non-alcoholic malt beverages; non-alcoholic beverages; syrups and other preparations for making beverages; malt syrup for beverages; extracts of hops for beer making, processed hops for beer making.

Beer; non-alcoholic beverages; syrups and other preparations for making beverages; are identically contained in both lists of goods (including synonyms).

The contested brewery products; craft beer; lager, stout, ale, pale ale, porter, pilsner, bock, saison, wheat beer, malt beer, low-alcohol beer, flavoured beers are included in the broad category of the opponent’s beer. Therefore, they are identical.

The contested processed hops for use in making beer; malt wort; malt syrup for beverages extracts of hops for beer making, processed hops for beer making are included in the broad category of the opponent’s preparations to make beverages. Therefore, they are identical.

The contested non-alcoholic beer, non-alcoholic malt beverages are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

The contested non-alcoholic beverages include, as a broader category, the opponent’s other non-alcoholic drinks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed mostly at the public at large. The goods in question are for mass consumption and are frequently purchased and used by the relevant consumer. Therefore, the attention of consumers upon the purchase of such goods is considered average.

3. The signs

	ALMOST FAMOUS
Earlier trade mark	Contested sign

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 mark is a composite figurative mark consisting of the words ‘Cerveza’, ‘FAMOSA’ and ‘ESPECIAL’ written in either dark brown or green against a white background, which is partially framed by a patterned area (depicting a cereal and vertical lines). Above the word ‘Cerveza’ there is a circle that contains a figurative element depicting a beer tank resting on the letter ‘M’. The date ‘1856’ appears in the spaces under the letter ‘M’. The contested mark is a word mark consisting of the words ‘ALMOST FAMOUS’.

The words ‘Cerveza’, ‘FAMOSA’ and ‘ESPECIAL’ of the earlier mark will be understood together as ‘beer, famous and special’ by the relevant public. All of these words are directly related to the goods in question, which have been found to be identical, and are therefore either descriptive (in the case of the word ‘cerveza’) or allusive (in the case of the words ‘famosa’ and ‘especial’) for some of the goods. In particular, the element ‘cerveza’ is descriptive of beer and brewery products; craft beer; lager, stout, ale, pale ale, porter, pilsner, bock, saison, wheat beer, malt beer, low-alcohol beer, flavoured beers and is weak for the rest of the goods, including non-alcoholic beer. The figurative elements of the earlier mark (the depiction of a cereal in the sign’s frame, the letter ‘M’ and the beer tank depicted at the top of the sign) may be perceived by the relevant public as making reference to the ingredients used to make beer and other beverages, namely malt, and will therefore also be weak for the goods in question.

The element ‘ALMOST’ of the contested mark has no meaning for the relevant public and is, therefore, distinctive. The element ‘FAMOUS’ may be understood by part of the relevant public, since it is very similar to the equivalent word in the official language in the relevant territory, namely ‘famosa’. For this part of the public, this element is allusive and therefore weak.

The contested sign, being a word mark, has no elements that could be considered clearly more dominant than other elements.

The element ‘FAMOSA’ in the earlier sign is the dominant element, as it is the most eye-catching because it is the largest element and is in a central position in the sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the letters ‘FAMO’, namely the first four letters of the dominant – although not very distinctive – element of the earlier mark and the first four letters of the second – although not very distinctive, for part of the public – element of the contested sign. The signs differ in the remaining letters of the words in which the coinciding letters appear, namely ‘SA’ in the earlier mark and ‘US’ in the contested mark. The signs also differ in the verbal elements ‘cerveza’ and ‘especial’ of the earlier mark, as well as in the word ‘almost’ of the contested mark. Furthermore, the signs differ in the stylisation of the verbal elements, the colours and the figurative elements of the earlier mark.

As the signs coincide in only irrelevant aspects, as the element ‘FAMOSA’ is a weak element in the earlier sign, it is concluded that the signs are not visually similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛FAMO’, present identically in both signs at the beginning of the weak elements ‘FAMOSA’ and ‘FAMOUS’. The pronunciation differs in the sound of the letters ‘SA’ and ‘US’ of these weak elements. Furthermore, the pronunciation differs in the sound of the words ‘cerveza’ and ‘especial’ of the earlier mark, as well as in the sound of the word ‘almost’ of the contested mark, which have no counterparts in the other mark.

As the signs coincide in only irrelevant aspects, as the element ‘FAMOSA’ is a weak element in the earlier sign, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings from the perspective of part of the relevant public, to the extent that they coincide in the weak elements ‘FAMOSA’ and ‘FAMOUS’, the signs are conceptually similar to a low degree. For the remaining part of the public, which may perceive the figurative elements of the earlier mark but may not grasp any meaning from the contested sign, 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The goods are identical but the signs are visually and aurally not similar, since they coincide in the first four letters ‘FAMO’ of the dominant, but weak, element of the earlier mark. This finding contrasts with the opponent’s assertion that ‘FAMOSA’ is the most distinctive word of the mark. As explained above, this element will be understood by the relevant public as referring to something famous and, since it is a laudatory term, it cannot be considered the most distinctive part of the sign, since it describes characteristics of the products. Moreover, the four coinciding letters are placed at the beginning of the second word, namely ‘FAMOUS’, of the contested mark. The word ‘ALMOST’ is the most distinctive element for the part of the public that will understand the word ‘FAMOUS’ as having the same meaning as the word ‘FAMOSA’.

Furthermore, the signs have numerous differences, considering all of the elements of the earlier figurative mark and the fact that this mark is composed of three words, namely ‘cerveza’, ‘famosa’ and ‘especial’, whereas the contested sign is composed of only two words, namely ‘almost’ and ‘famous’.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. As regards the words ‘simple’ and ‘basic’ in these cases, the Spanish relevant public will understand them. However, this is not true of the word ‘almost’ of the contested mark. Moreover, in the cases referred to, the marks were aurally almost identical, while in the present case the marks coincide in only 4 out of 21 letters of the earlier mark and 12 letters of the contested sign. The same applies to the decisions that the opponent referred to in its later observations of 01/06/2017. None of the decisions mentioned in those observations is comparable to the present case.

Taking into account the limited degree of distinctiveness of the earlier sign, it is considered that the relevant public will grasp the differences between the signs and distinguish the signs from each other. Therefore, the Opposition Division deems that the conceptual similarity between the marks is not sufficient to outweigh their striking differences, especially visually and aurally, and thus the relevant public will not establish a connection between them.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin EBERL

Anna POLITI

Vít MAHELKA

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.