TH THOMAS HARDY ESTD 1853 | Decision 2375833
Date Published: Sep 25, 2017
OPPOSITION No B 2 375 833
Michele Vecchiato, Via Vegri, 45, 35030 Selvazzano Dentro (PD), Italy, and Sandro Vecchiato, Via Cavallotto, 32/B, 35010 Rubano (PD), Italy (opponents), represented by Ufficio Veneto Brevetti, Via Sorio, 116, 35141 Padova, Italy (professional representative)
a g a i n s t
Accolade Wines Australia Limited, Reynell Road, Reynella, South Australia 5161, Australia (applicant), represented by Società Italiana Brevetti S.P.A., Via Carducci 8, 20123 Milano, Italy (professional representative).
On 24/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 375 833 is upheld for all the contested goods.
2. International registration No 1 177 595 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
REASONS:
The opponents filed an opposition against all the goods of international registration designating the European Union No 1 177 595. The opposition is based on European Union trade mark registration No 3 520 244, UK trade mark registration No 1 301 335 and UK trade mark registration No 2 199 945. The opponents 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 opponents do 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 notice of opposition was not accompanied by any evidence as regards earlier UK trade mark registrations No 1 301 335 and No 2 199 945.
On 20/10/2014 the opponents were given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 20/12/2016.
The opponents did not submit any evidence concerning the substantiation of the abovementioned earlier trade marks.
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 earlier marks:
- UK trade mark registration No 1 301 335 for the word mark:
THOMAS HARDY’S ALE
- UK trade mark registration No 2 199 945 for the word mark:
THOMAS HARDY
Therefore, the opposition is now based only on European Union trade mark registration No 3 520 244.
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 goods
As regards the earlier trade mark, the opponents based their opposition on beer, ale, stout, porter, lager and shandy in Class 32. However, the mark is not registered for the last four goods. Therefore, these will not be taken into account, and the relevant earlier goods are:
Class 32: Beer, ale.
The contested goods are the following:
Class 33: Wine.
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 contested wine is similar to the opponents’ beer. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Furthermore, they can originate from the same undertakings.
- 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 similar are directed at the public at large. The degree of attention is considered average.
- The signs
THOMAS HARDY’S | |
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. Since some elements of the sign will be understood only in those countries where English is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is a word mark consisting of the words ‘THOMAS HARDY’S’.
The contested sign is a figurative mark consisting of the verbal elements ‘THOMAS HARDY ESTD 1853’, written in standard light grey upper case letters, and the verbal element ‘TH’, written in slightly stylised light grey letters (one letter is superimposed on the other). While the element ‘TH’ is placed in the centre of the mark, the rest of the verbal elements are arranged in a circle set against a background resembling a label composed of a dark grey circle with scalloped edges.
The word ‘THOMAS’, present in both signs, is a well-known English male first name. The signs’ second words, ‘HARDY’S’ and ‘HARDY’, are common English surnames having an old French origin. The apostrophe and additional letter ‘S’ at the end of the earlier trade mark indicate that something belongs to the person named Thomas Hardy.
Since the earlier mark, ‘THOMAS HARDY’S’, and the first part of the contested sign, ‘THOMAS HARDY’, are likely to be perceived as a first name and a family name by the public in the relevant territory (regardless of the apostrophe and additional letter ‘S’ at the end of the earlier mark), they are considered distinctive for the relevant goods.
As far as the additional elements of the contested sign are concerned, the Opposition Division considers that the relevant public will perceive the element ‘TH’ as the abbreviation of the name ‘THOMAS HARDY’. Its distinctiveness in relation to the relevant goods is average.
The remaining word elements, ‘ESTD 1853’, refer to the year when the applicant’s company was established. Therefore, the element is descriptive in relation to the goods in question.
The figurative element of the contested sign has a purely decorative nature and is therefore weak for the goods at issue.
Visually, the signs coincide in the letters ‘THOMAS HARDY’, which are placed in a prominent position in both marks, forming their first and most distinctive elements. On the other hand, they differ in the apostrophe and additional letter ‘S’ in the earlier mark, which are hardly noticeable, and in the additional verbal and figurative elements in the contested sign, which are, with the exception of the abbreviation ‘TH’, less distinctive or not distinctive in relation to the relevant goods.
Therefore, the signs are visually similar to a higher than average degree.
Aurally, the signs coincide in the pronunciation of the letters ‘THOMAS HARDY’, which form the distinctive elements positioned at the beginnings of both marks. They differ in the sound of the additional letter ‘S’ in the earlier mark and the sound of the remaining verbal elements of the contested sign, which are, however, less distinctive or not distinctive for the goods at issue. Another difference in the pronunciation arises from the element ‘TH’ in the contested sign, which has, despite its distinctive character, only little impact on the comparison of the signs due to its perception by the relevant public as the abbreviation of the coinciding elements ‘THOMAS HARDY’.
Considering all the above, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same distinctive name, ‘Thomas Hardy’ (including the abbreviation of that name, ‘TH’), and they differ in the additional less distinctive or non-distinctive elements, the Opposition Division considers them 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 opponents did not explicitly claim that their 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 territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the contested goods are similar to the opponents’ goods. The degree of attention of the relevant public is average. The signs under comparison have been found to be visually similar to a higher than average degree, aurally similar to a high degree and conceptually highly similar.
As the signs begin with the words ‘THOMAS HARDY’S’ and ‘THOMAS HARDY’, the first parts of the conflicting marks are almost identical (with the exception of the apostrophe and the additional letter ‘S’ in the earlier sign). 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, and from top to bottom, which makes the part placed at the top left side of the sign (the initial part) the one that first catches the attention of the reader. This fact is also reinforced by the independent distinctive roles that these words play in each of the signs. Conversely, the differences between the signs are limited to less distinctive or non-distinctive elements and to the abbreviation ‘TH’, which, however, refers to the abovementioned name Thomas Hardy.
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 view of the foregoing, the Opposition Division is of the opinion that the differences between the marks are not sufficient to counteract their similarities, and in consequence the public is likely to believe that the goods come from the same undertaking or from economically linked undertakings.
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 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 opponents’ European Union trade mark registration No 3 520 244. It follows that the contested trade mark must be rejected for all the contested goods.
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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponents 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 opponents 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
Steve | Begoña | Pedro |
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.