WIEK | Decision 2493149 - Heineken Nederland B.V. v. Bee Dance OÜ

Date Published: Sep 24, 2017

OPPOSITION No B 2 493 149

Heineken Nederland B.V., Tweede Weteringplantsoen 21, 1017 ZD Amsterdam, Netherlands (opponent), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, Netherlands (professional representative)

a g a i n s t

Bee Dance OÜ, Trummi tn 30e, 12617 Tallinn, Estonia (applicant), represented by Koppel Patendibüroo OÜ, Oja tee 22-2, Tiskre, Harku vald, 76916 Harjumaa, Estonia (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 493 149 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 297 221, namely against all the goods in Classes 32 and 33. The opposition is based on European Union trade mark registration No 3 007 689. The opponent invoked Article 8(1)(b) 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:        Non-alcoholic beverages; preparations for making beverages; beer and brewery products; juices; flavoured carbonated beverages; non-dairy milk; waters; non-alcoholic malt free beverages [other than for medical use]; alcohol free wine; non-alcoholic honey-based beverages; aloe vera drinks, non-alcoholic; orange barley water; aperitifs, non-alcoholic; energy drinks; energy drinks [not for medical purposes]; guarana drinks; quinine water; isotonic drinks; isotonic beverages [not for medical purposes]; energy drinks containing caffeine; cocktails, non-alcoholic; part frozen slush drinks; sarsaparilla [non-alcoholic beverage]; lemon barley water; cider, non-alcoholic; sorbets in the nature of beverages; sherbets [beverages]; non-alcoholic fruit extracts; fruit juice beverages (non-alcoholic -); aloe vera juices; pineapple juice beverages; orange juice; aerated juices; fruit juice for use as a beverages; iced fruit beverages; vegetable drinks; vegetable juices [beverages]; beverages consisting principally of fruit juices; fruit drinks; fruit beverages and fruit juices; fruit-flavoured beverages; fruit nectars, non-alcoholic; fruit-based beverages; smoothies; tomato juice [beverage]; must; grape juice; grape juice beverages; carbonated non-alcoholic drinks; bitter lemon; ginger ale; lemonades; low-calorie soft drinks; fruit flavored soft drinks; root beer; tonic water [non-medicated beverages]; milk (peanut -) [non-alcoholic beverage]; almonds (milk of -) [beverage]; still water; sparkling water; table waters; lithia water; flavoured waters; mineral water (non-medicated -); mineral water [beverages]; bottled drinking water; bottled water; seltzer water; soda water; waters [beverages]; orange squash; extracts for making beverages; essences for making beverages; aerated water (preparations for making -); powders for effervescing beverages; pastilles for effervescing beverages; hop extracts for use in the preparation of beverages; hops (extracts of -) for making beer; concentrates for use in the preparation of soft drinks; lime juice cordial; liqueurs (preparations for making -); malt syrup for beverages; malt wort; squashes [non-alcoholic beverages]; mineral water (preparations for making -); cordials; orgeat; lemon squash; syrups for beverages; syrups for lemonade; syrups for making non-alcoholic beverages; syrups for making fruit-flavored drinks; grape must, unfermented; beer wort; non-alcoholic beer; kvass [non-alcoholic beverage]; coffee-flavored beer; lagers; malt beer; beers enriched with minerals; porter; stout; low alcohol beer; beer-based cocktails; beers; shandy.

Class 33:        Preparations for making alcoholic beverages; spirits and liquors; pre-mixed beverages; wine; aperitifs; vodka; alcoholic beverages (except beer); anisette [liqueur]; arak [arrack]; brandy; bourbon whiskey; cachaca; distilled beverages; digesters [liqueurs and spirits]; gin; grappa; calvados; schnapps; kirsch; cream liqueurs; fermented spirit; curacao; liqueurs; malt whisky; spirits [beverages]; peppermint liqueurs; rum; blended whisky; scotch whisky; scotch whisky based liqueurs; alcoholic energy drinks; alcoholic beverages of fruit; alcoholic punches; fruit (alcoholic beverages containing -); cocktails; alcoholic fruit extracts; rum punch; pre-mixed alcoholic beverages, other than beer-based; wine coolers [drinks]; wine punch; fortified wines; mulled wines; piquette; red wine; sangria; cooking wine; baijiu [Chinese distilled alcoholic beverage]; bitters; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; rice alcohol; sake; cider; low alcoholic drinks.

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.

Contested goods in Class 32

Beer(s) are identically contained in both lists of goods and services.

The contested brewery products include, as a broader category, the opponent’s beers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested lagers; malt beer; beers enriched with minerals; porter; stout; low alcohol beer are included in the broad category of, or overlap with, the opponent’s beer(s). Therefore, they are identical.

The contested non-alcoholic beverages; juices; flavoured carbonated beverages; non-dairy milk; waters; non-alcoholic malt free beverages [other than for medical use]; alcohol free wine; non-alcoholic honey-based beverages; aloe vera drinks, non-alcoholic; orange barley water; aperitifs, non-alcoholic; energy drinks; energy drinks [not for medical purposes]; guarana drinks; quinine water; isotonic drinks; Isotonic beverages [not for medical purposes]; energy drinks containing caffeine; cocktails, non-alcoholic; part frozen slush drinks; sarsaparilla [non-alcoholic beverage]; lemon barley water; cider, non-alcoholic; sorbets in the nature of beverages; sherbets [beverages]; non-alcoholic fruit extracts; fruit juice beverages (non-alcoholic -); aloe vera juices; pineapple juice beverages; orange juice; aerated juices; fruit juice for use as a beverages; iced fruit beverages; vegetable drinks; vegetable juices [beverages]; beverages consisting principally of fruit juices; fruit drinks; fruit beverages and fruit juices; fruit-flavoured beverages; fruit nectars, non-alcoholic; fruit-based beverages; smoothies; tomato juice [beverage]; must; grape juice; grape juice beverages; carbonated non-alcoholic drinks; bitter lemon; ginger ale; lemonades; low-calorie soft drinks; fruit flavoured soft drinks; root beer; lime juice cordial; tonic water [non-medicated beverages]; milk (peanut -) [non-alcoholic beverage]; almonds (milk of -) [beverage]; still water; sparkling water; table waters; lithia water; flavoured waters; mineral water (non-medicated -); mineral water [beverages]; bottled drinking water; bottled water; seltzer water; soda water; waters [beverages]; orange squash; non-alcoholic beer; kvass [non-alcoholic beverage]; coffee-flavoured beer; beer-based cocktails; grape must, unfermented; shandy have the same purpose, namely to accompany a meal or quench thirst on their own. In addition, these goods are in competition, their end users are the same and they are sold through the same distribution channels. Furthermore, they are sold alongside or close to one another in supermarkets. They also have the same producers, as brewers often also produce a variety of non-alcoholic beverages. For these reasons, the goods under comparison are considered highly similar.

The contested preparations for making beverages; aerated water (preparations for making -); powders for effervescing beverages; pastilles for effervescing beverages; hop extracts for use in the preparation of beverages; hops (extracts of -) for making beer; concentrates for use in the preparation of soft drinks; liqueurs (preparations for making -); extracts for making beverages; essences for making beverages; malt syrup for beverages; malt wort; squashes [non-alcoholic beverages]; mineral water (preparations for making -); cordials; orgeat; lemon squash; syrups for beverages; syrups for lemonade; syrups for making non-alcoholic beverages; syrups for making fruit-flavoured drinks; beer wort and the opponent’s beers are often sold next to each other in shops. While the methods of use are different (i.e. the contested goods cannot be consumed straight away, whereas the opponent’s beers are ready to drink), the goods may target the same public and they may be in competition. Therefore, these goods are similar to a low degree.

Contested goods in Class 33

Spirits and liquors; pre-mixed beverages; wine; aperitifs; vodka; alcoholic beverages (except beer); anisette [liqueur]; arak [arrack]; brandy; bourbon whiskey; cachaca; distilled beverages; digesters [liqueurs and spirits]; gin; grappa; calvados; schnapps; kirsch; cream liqueurs; fermented spirit; curacao; liqueurs; malt whisky; spirits [beverages]; peppermint liqueurs; rum; blended whisky; scotch whisky; scotch whisky based liqueurs; alcoholic energy drinks; alcoholic beverages of fruit; alcoholic punches; fruit (alcoholic beverages containing -); cocktails; alcoholic fruit extracts; rum punch; pre-mixed alcoholic beverages, other than beer-based; wine coolers [drinks]; wine punch; fortified wines; mulled wines; piquette; red wine; sangria; cooking wine; baijiu [Chinese distilled alcoholic beverage]; bitters; mead [hydromel]; nira [sugarcane-based alcoholic beverage]; perry; rice alcohol; sake; cider; low alcoholic drinks are similar to the opponent’s beers in Class 32. 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 bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can be distinguished, to some extent, by subcategory. Beers and alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings.

However, the contested preparations for making alcoholic beverages are considered dissimilar to the opponent’s beers, as they do not have the same nature. They differ in purpose and method of use and are not complementary or in competition. Moreover, these goods are not normally produced by the same companies or sold through the same distribution channels.

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 at issue are directed at the public at large. The degree of attention is considered average.

3. The signs

WIECKSE	WIEK
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 earlier mark and the contested sign are both word marks.

The earlier mark ‘WIECKSE’ has no meaning for the relevant public and is, therefore, distinctive.

However, the contested sign ‘WIEK’ will be understood as ‘wick’ or ‘wing’ by the Dutch-speaking public and as ‘age’ or ‘century’ by the Polish-speaking public. For the remaining part of the public, this element has no meaning. In any case, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is also distinctive.

Visually, the signs coincide in the four letters ‘WIE*K’. They differ in the remaining three letters, ‘C*SE’, of the earlier mark. However, the coincidence in the four letters is disrupted by the separation of the letter ‘K’ from the other letters by the letter ‘C’ in the earlier mark. Furthermore, the coinciding letters will be perceived as an integral part of the word ‘WIECKSE’ and are unlikely to be dissected by the relevant public. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, although the pronunciation of the signs coincides in the sounds of the letters ‛WIE’ and ‘K’, it differs in the sounds of the letters ‛C’ and ‘SE’ of the earlier sign, which have no counterparts in the contested mark. Although the letters ‘IE’ and ‘CK’ will most likely be pronounced as single sounds, ‘I’ and ‘K’ respectively, the ending of the earlier mark differs considerably, notably because it contains the strong sibilant consonant ‘S’ and the vowel ‘E’, which are unlikely to go unnoticed. Consequently, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks for Dutch and Polish speakers. Consequently, since only one sign has a meaning for this part of the public, the signs are not conceptually similar.

For the part of the public that will not perceive any meaning in the signs, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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).

Moreover, although the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, account is taken of the fact that consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. The earlier mark has a normal degree of distinctiveness and the relevant public is the public at large, whose degree of attention is average. The signs have some visual and aural similarities because of the four letters that they have in common. However, the impact of the similarities is limited, in particular given the differing overall number of letters of the earlier mark and the contested sign, the letter distribution and the different endings. As a result, the differences between the signs are more decisive for the outcome than the similarities.

Furthermore, the conceptual level is irrelevant for a part of the public, while, for the part of the public that will understand the meaning of the contested sign, the signs are even further removed.

Consequently, the visual and aural elements that the signs have in common are outweighed by their differences and will not give rise to a likelihood of confusion, even in relation to identical or similar goods. Therefore, there is no likelihood of confusion on the part of the public and the opposition must be rejected.

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.

The Opposition Division

Loreto URRACA LUQUE

Arkadiusz GORNY

Judit NÉMETH

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.