BOBBY'S SCHIEDAM DRY GIN | Decision 2375932 - EXQUISITE WINE - PRODUÇÃO E COMERCIALIZAÇÃO DE VINHOS, LDA. v. Distilleerderij en Likeurstokerij Herman Jansen B.V.
Date Published: Oct 2, 2017
OPPOSITION No B 2 375 932
Exquisite Wine - Produção E Comercialização De Vinhos, Lda., Rua Doutor Tanora Gonçalves, 176, 3 Dto, 2005-259 Santarém, Portugal (opponent), represented by Furtado - Marcas e Patentes, S.A., Avenida Duque de Ávila, 66-7º, 1050-083 Lisboa, Portugal (professional representative)
a g a i n s t
Distilleerderij en Likeurstokerij Herman Jansen B.V., Zijlstraat 2, 3111 PS Schiedam, the Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, the Netherlands (professional representative).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 375 932 is upheld for all the contested goods.
2. European Union trade mark application No 12 660 916 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 660 916. The opposition is based on Portuguese trade mark registration No 493 309. 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.
- The goods
The goods on which the opposition is based are the following:
Class 33: Alcoholic beverages (except beer); wines.
The contested goods are the following:
Class 33: Gin.
The contested gin is included in the broad category of the opponent’s alcoholic beverages (except beer). Therefore, these goods are identical.
- 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 identical are directed at the public at large. The degree of attention paid during their purchase is deemed to be average.
- The signs
Earlier trade mark
The relevant territory is Portugal.
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 is a figurative mark containing the verbal element ‘Bobby PORTUGUESE WINES’. While the first word ‘Bobby’ is written in slightly stylized bold black sentence case letters, the remaining two words ‘PORTUGUESE WINES’, which are placed below the word ‘Bobby’, are written in standard dark grey upper case letters.
Since the relevant public will perceive the word ‘Bobby’ as a name, it is considered to be distinctive in relation to the goods in question. Moreover, as it is visually the most eye-catching element in the mark, it is also considered dominant.
Regarding the word element ‘PORTUGUESE WINES’, the Opposition Division considers, that the relevant public will understand to the meaning of these English words due to the similar equivalence of the former in Portuguese (‘Português’) and, in case of the word ‘WINE’, due to the fact it is a basic English word internationally known. Therefore, since this expression refers to a type of alcoholic beverages produced in Portugal, it is considered to be non-distinctive in relation to the relevant goods.
The contested sign is a figurative mark containing the verbal elements ‘BOBBY’S SCHIEDAM DRY GIN’ written in standard black upper case letters. These elements are divided into two lines, first one consisting of the word ‘BOBBY’S’, depicted in bold case letters with bigger font size, and the second line consisting of the remaining words ‘SCHIEDAM DRY GIN’. These verbal elements are placed in a white rectangle with black boarders, behind which the stylized black and white pattern with angled lines appears.
Regarding the word ‘BOBBY’S’, the relevant public will, similarly as in the earlier mark, perceive it as a name, regardless of the additional letter ‘S’ at the end of the word. Therefore, the word is distinctive for all the goods at issue.
The second word element ‘SCHIEDAM’ refers to a municipality in the province of South Holland in the Netherlands but, as it is a relatively small town, it can be assumed that Portuguese consumers will not know it. Therefore, the word is distinctive in relation to the goods in question.
Regarding the word ‘DRY’, the Opposition Division considers it to be non-distinctive for the relevant goods as it is an English term that is internationally used for alcoholic drinks, in particular on bottle labels.
The meaning of the word ‘GIN’ that will be perceived by the relevant public is ‘a clear alcoholic spirit distilled from grain or malt and flavoured with juniper berries’ (information extracted from Oxford Dictionaries on 27/06/2017 at https://en.oxforddictionaries.com/definition/us/gin). As it is directly referring to the type of alcoholic beverages, it is considered non-distinctive in relation to the goods in question.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, in the present case the verbal element has a stronger impact on the overall impression created by the contested sign and the figurative element, with its purely decorative character, is considered less distinctive. Moreover, when focusing on the verbal element of the sign, it is the word ‘BOBBY’S’ that is visually eye-catching and dominant.
Visually, the signs coincide in the letters ‘B-O-B-B-Y’ which are placed in the prominent position in both marks, creating their most dominant elements. On the other hand, they differ in their stylization, in the additional letter ‘S’ in the contested sign and their additional verbal and figurative elements, which are however, with exception of the word ‘SCHIEDAM’, 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 ‘B-O-B-B-Y’, placed at the beginning of both marks and creating the dominant and distinctive elements in both of them. They differ in the sound of the additional letter ‘S’ in the contested sign and the sound of the remaining verbal elements which will probably be not pronounced because of their very reduced size in the whole mark.
Considering all the above, the signs are aurally similar to a higher than average 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 ‘BOBBY’ and they differ in non-distinctive or secondary elements, the Opposition Division considers them to be 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 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, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
In the present case, the contested goods are identical to the opponent’s goods. The degree of attention of the relevant public is average. The signs in dispute have been found to be visually and aurally similar to a higher than average degree and conceptually highly similar.
As the signs begin with the words ‘BOBBY’ and ‘BOBBY’S’, the first parts of the conflicting marks are almost identical (with exception of the additional letter ‘S’ in the contested 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 dominant character of these words in both marks and by the fact that they play independent distinctive roles in each of the signs.
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 public.
Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 493 309. It follows that the contested trade mark must be rejected for all the contested goods.
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent 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
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.