PLATINUM BRANDS | Decision 2717026 - Gorbatschow Wodka KG v. Amidel Polska
Date Published: Oct 1, 2017
OPPOSITION No B 2 717 026
Gorbatschow Wodka KG, Indira-Gandhi-Strasse 66-69, 13053 Berlin, Germany (opponent), represented by Mai Rechtsanwälte, Lutterstr. 14, 33617 Bielefeld, Germany (professional representative)
a g a i n s t
Amidel Polska, Karpacka 11, 43-316 Bielsko-Biała, Poland (applicant), represented by Piotr Bożyk Polmos Bielsko-Biała SA, ul. Poleczki 35, 02-822 Warszawa, Poland (employee representative).
On 18/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 717 026 is upheld for all the contested goods, namely
Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic beverages.
2. European Union trade mark application No 14 406 987 is rejected for all the contested goods. It may proceed for the remaining services.
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 14 406 987, namely against all the goods in Class 33. The opposition is based on, inter alia, German trade mark registration No 30 240 221. 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 German trade mark registration No 30 240 221.
- The goods
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beers).
Class 43: Providing of food and drink.
The contested goods are the following:
Class 33: Alcoholic beverages (except beer); Preparations for making alcoholic 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.
Contested goods in Class 33
Alcoholic beverages (except beer) are identically contained in both lists of goods.
The contested preparations for making alcoholic beverages are similar to a low degree to the opponent’s alcoholic beverages (except beer). They can be found in the same distribution channels, they can be produced by the same providers and they target the same relevant public.
- 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 to a low degree are directed at the public at large, in the case of alcoholic beverages (except beer), and at business customers with specific professional knowledge or expertise in the case of preparations for making alcoholic beverages.
The degree of attention may vary from average with regard to alcoholic beverages (except beer) to above average with regard to preparations for making alcoholic beverages.
- The signs
Platinum 44 | |
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 earlier mark is a word mark, consisting of ‘Platinum 44’ represented in title-case. The relevant public will associate the word ‘Platinum’ with the German word ‘Platin’ which is a chemical element (also a precious metal) (chemisches Element; information extracted from Duden Dictionary on 07/04/2017 at www.duden.de/suchen/dudenonline/platin). It is to be noted that ‘Platinum’ is a Latin word having the same meaning.
The indication ‘Platinum’ is generally understood as a promotional reference to outstanding quality, much like the terms ‘gold’ and ‘silver’, which likewise designate precious metals and thus convey the idea of high, enduring value. The numerical element ‘44’ will be understood by the relevant public as a reference to the alcohol content. It will be interpreted as a specimen of high value with an alcohol content of 44%. Therefore the word ‘Platinum’ will be lowly distinctive and the numerical element ‘44’ will be descriptive and therefore non-distinctive.
The contested sign is a figurative mark composed of two words, namely ‘Platinum’ and ‘Brands’. As far as the meaning of the first word is concerned the above explanations shall apply. With regard to the word ‘Brands’ it will be associated with the German word ‘Brand’ (Marke (Singular); information extracted from Duden Dictionary on 07/04/2017 at www.duden.de/suchen/dudenonline/brand) which means a trade mark/brand. The plural version of ‘Brand’ in German is ‘Brands’. Both words are depicted in a rather normal upper-font letters; the word ‘Platinum’ is in navy-blue and the word ‘Brands’ is in blue. The word ‘Platinum’ is represented above the word ‘Brands’. Furthermore, there is blue line below the letters ‘PLATIN’.
In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters, or in a combination thereof. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T 254/06, RadioCom, EU:T:2008:165, § 43).
Taking into account the above explanations the word ‘Platinum’ will be lowly distinctive and the ‘BRANDS’ will be descriptive and therefore non-distinctive.
The earlier mark, which consists of two elements (i.e. verbal and numerical), has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
In the contested sign the verbal element ‘PLATINUM’ is clearly dominant, due to its position, size and colour, while the other verbal and figurative elements are secondary as they have a decorative (i.e. the line) and descriptive (i.e. the word ‘BRANDS’) character.
Visually, the signs coincide in the word ‘PLATINUM’ which is lowly distinctive in both signs and clearly dominant in the contested trade mark. However, they differ in other numerical or verbal elements, namely ’44’ (i.e. earlier trade mark) and ’BRANDS’ (i.e. contested sign) which are non-distinctive. The signs differ also in the graphic elements of the contested sign as explained above.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PLATINUM’, present identically in both signs. The pronunciation differs in the sound of the number ‛44’ (pronunciation ‛vierundvierzig’) of the earlier sign which has no counterpart in the contested mark and the sound of the word ‛BRANDS’ of the contested mark, if pronounced at all due to its small size and also to its meaning as described above.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘PLATINUM’, ‘BRANDS’ and ‘44’ will be associated with the meaning explained above. To the extent that the signs share the meaning of ‘PLATINUM’ not altered by the other elements, 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.
- 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.
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 of the goods in question.
- Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C-39/97, Canon, EU:C:1998:442, § 17 et seq.).
In the case at issue, the goods are partly identical and partly similar to a low degree. The marks are visually, aurally and conceptually similar to different degrees. The entire first lowly distinctive element of the earlier mark is included in the contested sign as its dominant element. The additional elements ‛44’ and ‛BRANDS’, both non-distinctive, are not enough to avoid confusion between the signs under comparison. The differing graphic elements of the contested mark, as stated above, have a low degree of distinctiveness as they are for a decorative purpose.
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).
Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
Indeed, it is highly conceivable that the relevant consumers 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). That idea will be strengthened when they notice the word ‛BRANDS’ in the contested sign.
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.
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 similarity between the signs is particularly relevant (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning).
Furthermore, the General Court has held that, in the wines sector, consumers usually describe and recognise wine by reference to the verbal element that identifies it, particularly in bars and restaurants, where wines are ordered orally after their names have been seen on the wine list (23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 62; 13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 56; 12/03/2008, T-332/04, Coto d’Arcis, EU:T:2008:69, § 38). Accordingly, in such cases, it may be appropriate to attach particular importance to the phonetic similarity between the signs at issue. These considerations come into play in the finding of likelihood of confusion.
Considering all the above, even taking into account the low distinctiveness of the earlier mark (and the coinciding element ‛PLATINUM’), there is a likelihood of confusion on the relevant public.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 240 221. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right German trade mark registration No 30 240 221 leads 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Jessica LEWIS | Michal KRUK | Judit NÉMETH |
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.