SWAGGER | Decision 2046004 - David McKie v. UNIVERSAL LIQUORS NIGERIA LIMITED

Date Published: Sep 25, 2017

OPPOSITION No B 2 046 004

David McKie, Building 36, Marlborough Road, Woolwich, London SE18 6XD, United Kingdom (opponent), represented by DWF Llp, Great North House, Sandyford Road, Newcastle upon Tyne NE1 8ND, United Kingdom (professional representative)

a g a i n s t

Universal Liquors Nigeria Limited, 7b,Akanbi Disu Street, Lekki pahse 1, Lagos, Nigeria (applicant), represented by Mark & Law, 7, rue des Aulnes - Bâtiment B, 69410 Champagne au Mont d'Or, France (professional representative).

On 18/11/2013, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 046 004 is partially upheld, namely for the following contested goods:

Class 32:        Beers.

Class 33:        Alcoholic beverages (except beers).

2.        Community trade mark application No 10 729 481 is rejected for all the above goods. It may proceed for the remaining goods and services, namely the following:

Class 33:   Alcoholic essences; alcoholic extracts; fruit extracts, alcoholic.

Class 35:        Providing of business information and consultancy to consumers relating to alcoholic beverages; presentation of alcoholic beverages on communication media of all kinds for retailing, wholesaling, mail-order sales and online sales purposes; Import-export agencies in the field of alcoholic beverages; retailing, wholesaling, mail-order sale and online sale of beers and alcoholic beverages.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 10 729 481. The opposition is based on United Kingdom trade mark registration No 2 606 196. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

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.

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

Class 32:        Fruit juices.

The contested goods and services are, after a limitation made by the applicant on 02/05/2013, the following:

Class 32:        Beers.

Class 33:        Alcoholic beverages (except beers).

Class 35:        Providing of business information and consultancy to consumers relating to alcoholic beverages; presentation of alcoholic beverages on communication media of all kinds for retailing, wholesaling, mail-order sales and online sales purposes; Import-export agencies in the field of alcoholic beverages; retailing, wholesaling, mail-order sale and online sale of beers and alcoholic beverages.

The contested CTM application seeks protection for the entire class heading of Class 33 of the Nice Classification. It was filed on 15/03/2012. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade mark applications filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 10th edition.

Consequently, in order to take account of the entire alphabetical list in Class 33 of the contested CTM application, the Opposition Division will compare the goods of the earlier mark with both (i) the general indications specified and (ii) any items in the alphabetical list that do not fall within the natural and usual meaning of these general indications.

In the case of Class 33, the Opposition Division has identified the following items in the alphabetical list covered by the contested CTM application that do not fall within the natural and usual meaning of these general indications:

Class 33:         Alcoholic essences; alcoholic extracts; fruit extracts, alcoholic.

Therefore, as regards this class, both the general indications specified and the items listed above will be compared.

Contested goods in Class 32

The contested beers and the opponent’s fruit juices are often sold side by side both in shops, bars and on drinks menus. These goods target the same public and they may be in competition. Also, they can share the same origin. Therefore, these goods are similar.

Contested goods in Class 33

The contested Alcoholic beverages (except beers) and the opponent’s fruit juices are also often sold side by side both in shops, bars and on drinks menus. These goods target the same public and they may be in competition. Therefore, these goods are similar to a low degree.

The contested alcoholic essences; alcoholic extracts; fruit extracts, alcoholic are preparations for making alcoholic beverages and are specific goods mainly destined for manufacturers and used in the production process. They are considered to be dissimilar to the opponent’s goods. They differ in their nature and purpose as well as in their method of use. The end users are different and they are neither complementary nor in competition with each other.

Contested services in Class 35

The contested import-export agencies in the field of alcoholic beverages; retailing, wholesaling, mail-order sale and online sale of beers and alcoholic beverages and the opponent’s fruit juices are not similar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the earlier goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar. Thus, these goods and services must be considered dissimilar.

The contested providing of business information and consultancy to consumers relating to alcoholic beverages; presentation of alcoholic beverages on communication media of all kinds for retailing, wholesaling, mail-order sales and online sales purposes are rendered by specialised companies to other companies which need to improve their business and advertise their products. These services and the opponent’s goods in Class 32 have different nature, purpose, origin, end users and distribution channels. Neither are they complementary or in competition. Consequently, they are deemed to be dissimilar.

2. The signs

	SWAGGER
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The earlier mark is a figurative mark consisting of the word ‘SWAGGA’ reproduced using rounded yellow capital letters. These letters are reproduced with a black outline and are tilting upwards. The contested sign is a word mark consisting of the word ‘SWAGGER’.

Visually, the signs are similar to the extent that they coincide in their first five letters ‘SWAGG-‘. On the other hand, they differ in the way these letters are depicted in the case of the earlier sign and in their final letters, ‘-A’ in the case of the earlier sign and ‘-ER’ in the contested sign.

Aurally, for a part of the English speakers the signs are aurally identical since the letters ‘SWAGG-‘ are the same and the letters ‘-A’ and ‘ER’ will be pronounced identically. For another part of the English speaking consumers, the signs are similar to the extent that they share the letters ‘SWAGG-‘ while they differ in the pronunciation of their endings, ‘-A’ on one hand and ‘-ER’ on the other.

Conceptually, while the public in the relevant territory will perceive the contested mark ‘SWAGGER’ as meaningful word (for instance, as a verb with the meaning of ‘walk or behave in a very confident and arrogant or self-important way’, as a noun as ‘a very confident and arrogant or self-important gait or manner’ or, as an adjective, as ‘denoting a coat or jacket cut with a loose flare from the shoulders’, See Oxford English Dictionary – Online Edition), the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, it is considered that the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Relevant public – level 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 level 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 and similar to a low degree are directed at the public at large.

6. Global assessment, other arguments and conclusion

The contested goods and services are partly similar, partly similar to a low degree and partly dissimilar to those on which the opposition is based.

The signs are similar to the extent that they are identical in their beginnings and that they share five letters out of six in the earlier mark and seven in the contested sign. When deciding whether there is a likelihood of confusion, account should be taken of the fact that the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the general impression made by the mark (judgment of 15/12/2009, T-412/08, ‘Trubion’, paragraph 40; judgment of 25/03/2009, T-109/07, ‘Spa Therapy’, paragraph 30). In the present case, the signs share the first five letters, ‘SWAGG-’.

Furthermore, for a part of the public the signs are aurally identical, since the last letters of both signs, namely ‘-A’ of the earlier mark and ‘-ER’ of the contested signs will be pronounced in the same manner. Similarity on the phonetic level may have more weight than similarity on the visual level when the goods at issue are traditionally ordered orally. Where goods are ordered orally, the phonetic perception of the sign may also be influenced by factors such as the likely presence of various other sounds perceived by the recipient of the order at the same time. Such considerations are relevant where the goods in question are normally ordered at sales points with an increased noise factor, such as bars or nightclubs. In such cases, attaching particular importance to the phonetic similarity between the signs at issue may be appropriate. These considerations came into play in the finding of likelihood of confusion between the marks below for certain goods in Class 33 (judgment of 15/01/2003, T-99/01, ‘Mystery’ para. 48). In the present case, this consideration is valid also for beers in Class 32, which can be ordered in bars or nightclubs as well.

In view of all the foregoing, and in relation to similar goods, considering the aural identity, the visual similarity and the identical beginning of the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar (to different degrees) to those of the earlier trade mark. The opposition is not successful insofar as the goods and services which are dissimilar are concerned.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Hendrik DIJKEMA

Lucinda CARNEY

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.