BOHEMIA DOMINICANA | Decision 2739467
Date Published: Sep 25, 2017
OPPOSITION No B 2 739 467
SCC-Sociedade Central de Cervejas e Bebidas, S.A., Estrada da Alfarrobeira, 2625-244 Vialonga, Vila Franca de Xira, Portugal (opponent), represented by A.G. DA Cunha Ferreira, LDA., Avenida 5 de Outubro, 146-7º, 1050-061 Lisbone, Portugal (professional representative)
a g a i n s t
Cerveceria Nacional Dominicana, S.A., Autopista 30 de Mayo esq., San Juan Bautista Santo Domingo, Dominican Republic (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative).
On 25/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 739 467 is upheld for all the contested goods.
2. European Union trade mark application No 15 328 941 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 15 328 941 ‘BOHEMIA DOMINICANA’ (word mark). The opposition is based on, inter alia, Portuguese trade mark registration No 238 071 ‘BOHEMIA’ (word mark). 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 238 071.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 32: Beer.
The contested goods are the following:
Class 32: Beer
The contested beer is 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 and the degree of attention is average.
- The signs
BOHEMIA | BOHEMIA DOMINICANA |
Earlier trade mark | Contested sign |
The relevant territory is Portugal
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 word ‘BOHEMIA’, included in both signs, will be understood by the majority of the relevant public as the equivalent to the Portuguese word ‘Boémia’, due to the spelling coincidences between them and to the fact that they are pronounced identically. Portuguese consumers will therefore attribute it the meaning of a socially, unconventional person or way of living.
According to the above, the word “BOHEMIA” enjoys an average degree of distinctiveness as it does not describe or allude to any of the essential characteristics of the relevant goods involved.
However, for another part of the relevant public, ‘BOHEMIA’ will be associated to a very well known historical region in central Europe and currently located in the contemporary Czech Republic. Bohemia is particularly known for its glassware industry. The fact that Czeck Republic is the most important consumer of beer in the European Union, and therefore, the said verbal element is considered to be weak for the goods at hand and for this part of the relevant public.
The word ‘DOMINICANA’ exists as such in Portuguese, to refer to the fact that something or someone originates from the Dominican Republic.
Regarding the distinctiveness of the elements in the contested mark, two scenarios must be contemplated. One in which the word “DOMINICANA” is perceived as an independent word within the contested sign, and one in which that term is perceived it as an adjective linked to the word “BOHEMIA” preceding it.
If ‘DOMINICANA’ is perceived as an individual element, it will be perceived as non-distinctive by the relevant public, because it denotes the geographical origin of the goods (i.e. beers) or the location of the company providing them, namely from the Dominican Republic. Therefore, in this scenario, the contested mark is formed by the distinctive word ’BOHEMIA’ and the non-distinctive element ‘DOMINICANA’.
If the word ‘DOMINICANA’ is perceived as an adjective linked to the word ‘BOHEMIA’, consumers will perceive ‘BOHEMIA DOMINICANA’ as meaning an ‘unconventional way of life in the Dominican Republic’. In this scenario, both elements forming the contested mark are of average distinctive character, and the sign has no element more distinctive than others.
The Opposition Division will now proceed with the comparison of signs, focusing on the part of the public for which ‘DOMINICANA’ is non-distinctive according to the explanations above.
Visually, the signs coincide in the word ‘BOHEMIA’ which constitutes the entirety of the earlier mark and is the first element read in the contested sign, in which it also constitutes the most distinctive element.
The signs differ in the additional word ‘DOMINICANA’ of the contested mark.
Bearing in mind that this element is non-distinctive, its impact is very limited on the overall impression conveyed by the contested sign.
As indicated by the opponent, 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, the signs are visually highly similar. In this case, it is therefore relevant to note that the coincidences are found at the beginning of the contested mark.
Aurally, the signs coincide in the sound of letters ‘B-O-H-E-M-I-A’, forming the entire earlier mark, and differ in the sound of letters ‘D-O-M-I-N-I-C-A-N-A’ of the contested mark. As such, the earlier mark is aurally entirely contained in the contested sign, being the first element pronounced.
Due to the non-distinctive character of the word ‘D-O-M-I-N-I-C-A-N-A’ it even likely that part of the public omits this term when referring to the sign. In such case, the signs are aurally identical. If the term ‘D-O-M-I-N-I-C-A-N-A’ is pronounced, the signs are aurally similar to an average degree.
Conceptually, when encountering the contested sign, the public’s attention will be focused on the meaning of the element which is able to indicate commercial origin of the goods, whilst the meaning of the non-distinctive element has a very low impact on the conceptual perception of the contested sign. As both signs will be associated with the distinctive concept of the element ‘BOHEMIA’, they are 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.
- 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.
- Global assessment, other arguments and conclusion
The contested goods are identical to the goods covered by the earlier mark. Moreover, the signs are strikingly similar on all levels of comparison, given that the earlier mark is entirely reproduced in the contested sign as an independent and distinctive element. Since the differences between the signs are confined to a non-distinctive element, they are clearly insufficient for enabling the relevant public to safely distinguish between the signs.
The goods applied for are mass consumption goods, and the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.
However, as argued by the opponent, according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
Based on this, consumers might believe that the conflicting goods come from the same or economically-linked undertakings. Also having regard to the principle of interdependence, it is considered that the coincidences between the signs outweigh their dissimilarities and may induce at least part of the public to believe that the conflicting goods come from the same or economically-liked undertakings.
Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal (e.g. an adjective such as ‘DOMINICANA’) or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image. Therefore, the contested mark could be seen by at least a part of the public as a new version of the earlier mark, or as a new trade mark from the opponent, in order to designate a new line of products, and therefore perceiving them as with the same commercial origin.
It is purely on the basis of the average degree of inherent distinctiveness of the earlier mark, the identity established between the goods at issue, and the obvious similarity between the signs, that a likelihood of confusion is found.
Considering all the above, there is a likelihood of confusion and the opposition is well founded on the basis of the opponent’s Portuguese trade mark registrations No 238 071. It follows that the contested trade mark must be rejected for the contested goods.
The opponent has also based its opposition on the following earlier Portuguese trade mark registration No 560 171 .
As the above earlier right lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268.
The above conclusions were reached in relation to the part of the public for which ‘DOMINICANA’ is a non-distinctive element. Since this scenario has taken to the rejection of the contested mark for all the contested goods, there is no need to focus on additional different scenarios.
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
María del Carmen SUCH SÁNCHEZ | Alexandra APOSTOLAKIS | Richard BIANCHI |
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.