OPPOSITION DIVISION

OPPOSITION No B 2 678 343

Globefill Incorporated, 1810 Avenue Road, Suite 300, Toronto, Ontario M5M 3Z2,

Canada (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70

Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

Prime Wine Sweden AB, Frihamnsgatan 30, SE-115 56 Stockholm, Sweden

(applicant), represented by Hamilton Advokatbyrå KB, Hamngatan 27, 101 33

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark

application No 14 937 841, ‘Sugar Skull’. The opposition is based on European Union

trade mark registration No 9 671 934, ‘SKULL’. The opponent invoked Article 8(1)(b)

and 8(5) EUTMR. However, Article 8(5) EUTMR was subsequently withdrawn by the

opponent in its observations of 11/10/2016.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

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.

a) The goods

The goods on which the opposition is based are the following:

with each other or complementary to each other.

An interpretation of the wording of the list of goods and services is required to

determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the

relationship of individual goods and services with a broader category, is exclusive

and restricts the scope of protection only to the specifically listed goods and services.

Contested goods in Class 33

Contrary to the applicant’s arguments, the contested wine is similar to the opponent’s

vodka. Although their production processes are different, these goods belong to the

same category of alcoholic drinks intended for the general public. They can 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 similar are directed at the public at large.

Contrary to the applicant’s argument, the degree of attention is considered average.

c) The signs

SKULL Sugar Skull

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

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 element that the signs have in common, ‘SKULL’, is meaningful in part of the

relevant territory, namely the countries where English is spoken. Consequently, the

Opposition Division finds it appropriate to focus the comparison of the signs on the

English-speaking part of the public.

Both signs are word marks, so it is irrelevant whether they are depicted in upper or

lower case. The element ‘SKULL’, present in both marks, will be associated with ‘the

goods (alcoholic beverages) are sweet.

Visually and aurally, the signs coincide in the distinctive element ‘SKULL’, whereas

they differ in the additional, less distinctive, element ‘SUGAR’ of the contested mark.

They are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. As the signs coincide in the concept of the distinctive

element ‘SKULL’, which appears in both signs, and taking into account the weak

character of the word ‘SUGAR’ of the contested sign, the signs are conceptually

highly similar.

As the signs have been found similar in at least one aspect of the comparison, the

d) 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 an

enhanced scope of protection. However, in its observations of 11/10/2016, the

opponent withdrew this claim.

meaning for any of the goods in question from the perspective of the public in the

normal.

The appreciation of likelihood of confusion on the part of the public depends on

market, the association which can be made with the registered mark, the degree of

EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are similar and the earlier mark enjoys an average degree of

distinctiveness in relation to the relevant goods. The signs are visually and aurally

similar to an average degree on account of the coinciding element ‘SKULL’, which is

the only element of the earlier mark and the most distinctive element of the contested

sign. Furthermore, the signs are conceptually highly similar.

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.

In the present case, it is highly conceivable that the relevant consumer will perceive

Considering all the above, there is a likelihood of confusion on the part of the

English-speaking part of the public. As stated above in section c) of this decision, a

sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European

Union trade mark registration No 9 671 934. It follows that the contested trade mark

must be rejected for all the contested goods.

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former

Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the

subject to appeal was taken. Furthermore, a written statement of the grounds for

appeal must be filed within four months of the same date. The notice of appeal will be

deemed to have been 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 Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be

filed within one month of the date of notification of this fixation of costs and will be

deemed to have been filed only when the review fee of EUR 100

(Annex I A(33) EUTMR) has been paid.