Royal Dog | Decision 2808890

Date Published: Sep 24, 2017

OPPOSITION No B 2 808 890

Royal Unibrew A/S, Faxe Alle 1, 4640 Faxe, Denmark (opponent), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000 Århus C, Denmark (professional representative)

a g a i n s t

Pivovar Zubr A.S., Komenského 696/35, Přerov I-Mésto, 750 02 Přerov, Czech Republic (applicant), represented by Čermák A Spol., Elišky Peškové 15, 150 00 Prague 5, Czech Republic (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 808 890 is upheld for all the contested goods, namely:

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

2.        European Union trade mark application No 15 622 681 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 622 681 for the word mark ‘Royal Dog’, namely against all the goods in Class 32. The opposition is based on international trade mark registration No 854 092 designating the European Union for the word mark ‘ROYAL’. The opponent invoked Article 8(1)(b) and 8(5) 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.

The contested goods are the following:

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making 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.

Beers are identically contained in both lists of goods.

The contested mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices are similar to the opponent’s beers, as they have the same purpose and can have the same producers, end users and distribution channels. Furthermore, they are in competition.

The contested syrups and other preparations for making beverages are ingredients and additives that may be used in the production of beers. Therefore, they are similar to a low degree to the opponent’s beers. Although the contested goods target mainly producers of beer rather than the general public, such goods are also available in the form of home beer-brewing kits, of which they form the main ingredients; therefore, they may overlap in producers, distribution channels and relevant 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 and some of said goods (i.e. syrups and other preparations for making beverages) are also directed at business customers with specific professional knowledge or expertise in the sector of beverage making. The degree of attention is average.

The Opposition Division notes that, contrary to the applicant’s claim in its observations of 11/05/2017, it is not considered that the relevant consumer of beers shows any particular brand loyalty. In any case, the applicant was not able to substantiate its claim, since it submitted only an article from the internet on the emotional connection between consumers and beers and a survey referring to only the Czech Republic’s territory (Exhibits 3 and 4).

3. The signs

ROYAL	Royal Dog
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the marks are not meaningful for a part of the public. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-, Bulgarian- and Lithuanian-speaking parts of the relevant public.

The earlier mark is the word mark ‘ROYAL’. Although it cannot be excluded that a part of the relevant public will understand the meaning of the word ‘ROYAL’, in principle it lacks any meaning in Spanish, Bulgarian and Lithuanian. For Spanish-speaking consumers, the equivalent term is ‘real’ which does not resemble the English term very closely and, therefore, ‘ROYAL’ will be perceived as a foreign term (26/06/2013, R 214/2012-1, Royal Kitchen/ROYAL et al.). For the Bulgarian- and Lithuanian-speaking parts of the public, the word is completely meaningless. Considering that the element ‘ROYAL’, present in both marks, has no meaning for the relevant public, it is distinctive.

The contested sign is also a word mark and includes the word ‘ROYAL’, whose distinctive character has been defined above, and the word ‘DOG’, which has no meaning for a substantial part of the relevant public and is, therefore, distinctive.

As a general rule, when a sign is registered as a word mark, it is the word as such that is protected and not its written form; therefore, the typeface used at the time of the filing of the mark is irrelevant. In the present case, differences in the use of lower or upper case letters, as in the case of the contested sign ‘Royal Dog’, are immaterial, even if lower and upper case letters alternate.

Because both marks are word marks, neither mark has any elements that could be considered more dominant than other elements.

Visually and aurally, the signs coincide in the letters/sounds ‘ROYAL’, which form the entire earlier mark and the first element (reading from left to right) of the contested sign. The marks differ in the letters/sounds ‘DOG’ of the contested mark.

It is well known that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (‘ROYAL’) the one that first catches the attention of the reader. Therefore, the coincidence in the first parts of the marks has more relevance than the difference in the end of the contested sign.

Contrary to the applicant’s claim in its observations of 11/05/2017, this is a general principle that does not only apply to commonalities in dominant elements.

In view of the above and considering that the earlier mark is entirely reproduced in the contested sign, the marks are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public and, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

To this extent, the fact that the words ‘ROYAL’ and ‘DOG’ of the contested sign constitute an unusual conceptual combination in English, as argued by the applicant in its observations of 11/05/2017, is irrelevant, since the relevant public, as established and limited above, will not understand the meaning of the words at issue.

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.

According to the opponent, the earlier mark has been extensively used and enjoys reputation and an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The contested goods are identical and similar to various degrees to the opponent’s goods. They target the public at large and some of the goods target the professional public, whose degree of attention is average.

The Court has set out the essential principle that 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). In the present case, the low degree of similarity between the opponent’s goods and some of the contested goods, namely syrups and other preparations for making beverages, together with the high degree of visual and aural similarity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.

The comparison has shown that the signs are visually and aurally highly similar, since they coincide in the element ‘ROYAL’, which forms the entire earlier mark and is the first and therefore most relevant element of the contested sign. There are no conceptual aspects that would constitute a relevant difference between the marks. The signs differ in only the second verbal element of the contested sign, ‘DOG’.

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).

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. Bearing in mind that the relevant goods (beers and non-alcoholic beverages) are often produced in different forms, such as still and sparkling mineral water, and styles, such as amber, light, dark, red or pilsner beer, it is considered that the contested sign could be perceived as a new line of products/ sub-products marked with the earlier mark. The relevant part of the public could therefore easily conclude that the goods labelled and offered under the contested sign come from the same undertaking as the goods offered and labelled under the earlier mark, or from economically linked undertakings.

In its observations of 11/05/2017, the applicant argues that the earlier trade mark has a normal or low degree of distinctiveness given that there are many trade marks that include the word ‘ROYAL’. In support of its argument, the applicant mentions 108 European Union trade mark registrations for Class 32 containing said element, 6 of which are in the name of the opponent.

The Opposition Division notes that the existence (which, in any case, is only claimed and not demonstrated, since no database excerpts were provided) of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘ROYAL’. Under these circumstances, the applicant’s claims must be set aside and the distinctive character of the earlier mark must be seen as normal for the reasons explained above.

The applicant also argues that there is a coexistence agreement between it and the opponent regarding European Union trade mark registrations No 15 625 866 and No 15 953 359. Nonetheless, such a circumstance is external to and therefore irrelevant for the present comparison, which is focused exclusively on the marks compared in section c) of this decision. Consequently, this argument must also be disregarded.

In view of the foregoing, there is a likelihood of confusion on the part of the Spanish-, Bulgarian- and Lithuanian-speaking parts of the public in the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 854 092 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Birgit FILTENBORG

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.