OPPOSITION No B 2 765 512

La Zaragozana S.A., Ramón Berenguer IV, 1, 50007 Zaragoza, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Przedsiębiorstwo Handlowe Andrzej Czachorowski, Czaple 23, 80-298 Gdańsk-Kokoszki, Poland (applicant).

On 01/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 765 512 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 941 223, namely against some of the goods in Class 32. The opposition is based on European Union trade mark registration No 4 328 911, European Union trade mark application No 13 960 621, European Union trade mark registration No 14 749 535, Spanish trade mark registration No 83 762, Spanish trade mark registration No 1 674 949, Spanish trade mark registration No 2 760 463 and Spanish trade mark registration No 3 018 141. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the evidence filed by the opponent as regards the earlier Spanish trade mark registrations No 83 762, No 1 674 949, No 2 760 463 and No 3 018 141 consisted of extracts from a Spanish database and their English translations. The evidence mentioned above is, however, not sufficient to substantiate the opponent’s earlier Spanish trade marks on the basis of which the opposition is, inter alia, based, because the documents submitted are of unknown origin. In particular, the extracts do not contain an official identification of the authority with which the marks are registered.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these four  earlier Spanish trade marks.

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 two earlier European Union trade mark registrations and on one earlier European Union trade mark application. The Opposition Division notes that the registration procedure for European trade mark application No 13 960 621 is not yet finalised, as an opposition was filed against the registration of this mark, and the opposition decision taken is currently under appeal. However, as the outcome of the opposition will be the same, the examination of the opposition will continue in relation to all the earlier EU trade marks claimed by the opponent, including the application concerned.

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 328 911. 

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:   Non-alcoholic beer, ginger ale; non-alcoholic extracts of hops for making beer.

The contested non-alcoholic beer; ginger ale is highly similar to the opponent’s beers. These goods have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

The contested non-alcoholic extracts of hops for making beer are extracts used in the production of beers, and therefore a low degree of similarity can be ascertained when it is compared with the opponent’s beers. Although the contested products are aimed mainly at producers of beer rather than the general public, it can be made available in the form of homemade beer kits, of which it forms the main ingredient and, thus, the producers, distribution channels and relevant public of the goods in question may overlap.

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 in question.

In the present case, the goods are similar (to various degrees) and are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The most similar elements in both marks ‘AMBAR’ and ‘AMBER’ are distinctive in certain territories, for example, in Spain, where as explained below, the first term of the earlier mark, ‘CERVEZAS’, will lack distinctiveness. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, which also represents the best-case scenario for the opponent.

The earlier mark is a word mark, composed of the verbal elements CERVEZAS and AMBAR. The word ‘CERVEZAS’ is the Spanish term for beer, and thus will be descriptive in relation to the goods. The word ‘AMBAR’ will be understood as ‘a brownish yellow; a hard, transparent, yellowish-brow substance that was formed in ancient times from resin’. Taking into account that the relevant goods are beers and that in Spanish the word ‘AMBAR’ is not widely used to describe beer, it is deemed that ‘ambar’ will not be seen as a reference to the colour of beer. (21/05/2015, T-197/14, GREEN'S, EU:T:2015:313, § 54-55). Therefore, this verbal element is considered to be distinctive.

The contested sign was filed as a figurative mark; it is however composed of the verbal elements ‘sped from amber water’ in an almost standard typeface, in lower case letters and in a black bold font. None of the verbal elements have any meaning for a significant part of the relevant public; therefore, they are normally distinctive. Furthermore, the standard stylisation of the contested sign is minimal and will be perceived as purely decorative. The contested sign has no dominant (visually eye-catching) elements.

Visually, the signs coincide in the string of letters ‘AMB*R’, which forms almost the entirety of the only distinctive element in the earlier mark, on the one hand, and the third verbal element of the contested sign, on the other hand. However, they differ in the letter ‘A’ and in the descriptive first verbal element ‘CERVEZAS’ in the earlier mark, which have no counterpart in the contested sign, on the one hand, and in the letter ‘e’ of the third verbal element in the contested sign as well as in the first two and the fourth verbal elements in the contested sign, namely ‘sped’, ‘from’ and ‘water’, which are of normal distinctiveness and have no counterpart in the earlier mark, on the other hand. Consequently, they also differ in their length and structure.

The initial two verbal elements of the contested sign are very different from the beginning of the earlier mark; in addition they are normally distinctive. While it is acknowledged that the third element of the contested sign reproduces four letter of the only distinctive element of the earlier mark, the coincidences in these letters are outweighed by the obvious differences the signs present (length, structure, different beginning).

In addition, 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.

Therefore, the signs are similar to a very low degree only.

Aurally, the pronunciation of the signs merely coincides in the sound of the string of letters ‛AMB*R’, present in both signs. The pronunciation differs in the letter ‘A’ of the earlier mark and in the (non-distinctive) element ‘CERVEZAS’ of the earlier mark, on the one hand, and in the first two distinctive elements (‘sped from’) and the fourth - likewise normally distinctive - element (‘water’) as well as in the letter ‘e’ of the third verbal element in the contested sign, on the other hand.

Therefore, the signs are aurally similar to a very low degree only.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. 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 territories. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the earlier mark.

5. Global assessment, other arguments and conclusion

The signs are visually and aurally similar to a very low degree only; in addition they are not conceptually similar. In particular, the signs are similar only to the extent that they coincide in the string of letters ‘AMB*R’. The signs differ in their beginnings (which in the contested sign consists of two verbal elements that are normally distinctive), in addition to being different in length, rhythm, structure and composition (two words in the earlier mark as opposed to four verbal elements in the contested sign).

The additional elements of the contested sign are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks. Indeed, the similarities between the signs caused by the mere coincidence in the string of letters ‘AMB*R’ are secondary within the overall impression given by the signs. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

The opponent refers to two previous decisions of the Office to support its arguments that the signs are confusingly similar. 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 decisions referred to by the opponent are not relevant to these opposition proceedings, since the marks at issue are not comparable to the signs in the cited proceedings. In particular, it concerns two cases in which the earlier mark was composed of the verbal element ‘AMBAR’ only, and thus almost entirely comprised in the contested (purely word) marks (which moreover consisted of only two and three verbal elements, respectively, as opposed to four verbal elements of which the contested sign in the present case is composed). In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even considering that the goods are similar (to various degrees), there is no likelihood of confusion on the part of the Spanish-speaking public, which is the best light in which the opponent’s case can be considered. This absence of a likelihood of confusion equally applies to the remaining part of the public for which the element CERVEZAS is distinctive and/or the AMBAR does not have any meaning, and/or where the elements ‘from’, ‘amber’ and ‘water’ would be understood (so as to be even less distinctive), since this would even further differentiate the signs, so that that part of the public will perceive the signs as being even less similar.

Considering all the above, even for the goods that are highly similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected on the basis of the above mentioned earlier trade mark.

The opposition is also based on the following earlier trade marks:

• European Union trade mark registration No 14 749 535 for the figurative mark ;

• European Union trade mark application No 13 960 621 for the figurative mark .

These other earlier marks invoked by the opponent are however less similar to the contested mark than the one compared above. They indeed contain further figurative elements and/or additional words that are not all devoid of distinctiveness and which are not present in the contested trade mark. In particular, firstly, as regards earlier European Union trade mark registration No 14 749 535, this contains the additional element ‘FAB’;  secondly, European Union trade mark application No 13 960 621 is a complex mark, composed of several figurative elements and additional words which are not present in the contested trade mark. Despite the fact that these marks cover also goods that are identical to those of the contested sign, the conclusion on the similarity of sings cannot be dfifferent from the one reached above in section c). Indeed, applying the interdependence there would still not exist any likelihood of confusion since the degree of similarity of the marks is too low.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected and no likelihood of confusion exists with these earlier marks in respect to the goods at issue neither.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

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.