OPPOSITION No B 2 405 663

Grupo Osborne S.A., Calle Fernán Caballero 7, 11500 El Puerto de Santa María (Cádiz), Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009 Barcelona, Spain (professional representative).

a g a i n s t

Schlumberger Wein- und Sektkellerei GmbH, Heiligenstädter Str. 43, 1190 Wien, Austria (applicant), represented by Noerr Alicante IP S.L., Avenida México 20, 03008 Alicante, Spain (professional representative).

On 26/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 405 663 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 684 809. The opposition is based on Community trade mark registration No 12 684 80977 and Spanish trade mark registration No 12 684 809. 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

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

Community trade mark registration No 12 684 80977

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Spanish trade mark registration No 12 684 809

Class 33: Alcoholic beverages (except beer)

The contested goods are the following:

Class 32: Beers; Non-alcoholic beverages, namely tonic water, Ginger ale, Bitter lemon.

Class 33: Alcoholic beverages (except beers).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant list of goods 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.

Contested goods in Class 32

Beers are identically contained in the contested list of goods and in the list of goods of Community trade mark registration No 12 684 80977.

The contested tonic water, ginger ale, bitter lemon are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are considered identical.

Contested goods in Class 33

Alcoholic beverages (except beers) are identically contained in the contested list of goods and in the list of goods of Spanish trade mark registration No 12 684 809.

2. The signs

CTM 10 715 977 Spanish trade mark No 12 684 809
Earlier trade marks	Contested sign

The relevant territory is the European Union for Community trade mark registration No 10 715 977 and Spain for Spanish trade mark registration No 12 684 809.

The earlier Community trade mark registration No 12 684 80977 is a figurative sign creating a three-dimensional impression. It depicts an elephant reproduced standing almost sideways with all legs in straight position and its four feet on the ground. The head and the trunk of the elephant are in relaxed position and the face of the elephant is painted in vivid colours. The back is covered by a red and blue sort of ornamental blanket. Behind the elephant, a shaded grey stylized depiction of a jungle is reproduced. Above it, the word ‘MARKHAM’ is reproduced in black letters which are outlined in orange and positioned as curved. This word element is followed by a rather small and hardly distinguishable ® symbol. Below the elephant, the words ‘PREMIUM INDIAN TONIC WATER’ are reproduced using ordinary black capital letters positioned in a curved manner with respect to the other verbal element of the sign. At the bottom of the sign, three orange elements are placed, namely characters in what looks like an Indian alphabet.

The earlier Spanish trade mark registration No 12 684 809 is identical to Community trade mark registration No 12 684 80977 with the exception of the absence of the verbal elements ‘MARKHAM’ and ‘PREMIUM INDIAN TONIC WATER’.

The contested sign is a purely figurative, two-dimensional sign in greyscale. It depicts a walking elephant reproduced standing sideways, the back of which is covered with an ornamental blanket. Both tusk of the elephant are clearly visible, and the head and the trunk of the elephant are raised and in a higher position with respect to the body. Moreover, the elephant is depicted without background and without additional letters.

Visually, the depiction of the signs is different. The only elements which might present some similarities, namely the elephants in both signs, are reproduced in a different manner, colour, position and style. The rest of the elements of the signs do not share any point of contact.

All in all, the signs only coincide in the depiction of an elephant, which is however similarity found on a very low resolution.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier Community trade mark registration No 12 684 80977 is pronounced as /MARKHAM/ and /PREMIUM INDIAN TONIC WATER/. The earlier Spanish trade mark registration No 12 684 809 has no verbal element which will be recognised as such. Both earlier marks have oriental characters which are unlikely to be pronounced. The contested sign is a purely figurative sign which is not subject to a phonetic assessment.

As at least one of the signs is purely figurative (the contested sign), it is not possible to compare the signs in conflict aurally.

Conceptually, the whole of the relevant public will recognize the depiction of an elephant in both earlier marks and in the contested mark. The word ‘MARKHAM’ of the earlier Community trade mark is the name of a TV series, a city in Canada, several cities in United States of America and also a surname. Nevertheless, the Opposition Division considers that it is most likely that no concept will be linked to this element by the relevant public.

As regards the words ‘PREMIUM INDIAN TONIC WATER will be understand by the English-speaking public. Italian and Spanish-speaking public will recognise the elements ‘PREMIUM INDIAN TONIC’, as an expression indicating ‘high quality tonic of Indian origin’, which it is similar to the equivalent in their languages, but it is not likely that they understand the element ‘WATER’. For another part of the relevant public, these words are meaningless. For the whole of the relevant public, the verbal elements which are reproduced in oriental characters are meaningless. For the sake of completeness, it must be also considered that a part of the public will be able to recognise the symbol ® placed after the word ‘MARKHAM’ of the earlier Community trade mark and will associate it with the symbol referring to a registered trade mark.

Notwithstanding the aforementioned differences in the depiction of the elephants and the differences in their meaning of their verbal elements that will be recognised by at least a part of the public, the signs are conceptually similar to the extent that they all contain elephants.

Taking into account the abovementioned conceptual coincidences, the signs under comparison are similar to a certain extent.

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 earlier Spanish trade mark and the contested sign have no element that could be clearly considered more distinctive than other elements.

The verbal elements ‘PREMIUM INDIAN TONIC WATER’ of the earlier Community trade mark will be associated by a part of the public (at least the English-speaking consumers) with an expression understood as high quality tonic water of Indian origin. Bearing in mind that the relevant goods are beverages, it is considered that this element is weak for a part of these goods, namely for ‛tonic water, ginger ale, bitter lemon’. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue. The same limited impact is valid for the symbol ®, which will be understood as a simple indicator of the registration of the trade mark, and is therefore a non-distinctive element of the mark.

The earlier Spanish trade mark and the contested sign have no element which could be considered more dominant (visually eye‑catching) than other elements.

The verbal element ‘MARKHAM’ and the depiction of an elephant in the earlier Community trade mark constitute the dominant element as, by virtue of their size and position, they are the most eye-catching.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of a weak element in the earlier Community trade mark as stated above in section c) of this decision.

5. 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 is considered to be average.

6. Global assessment, other arguments and conclusion

The goods covered by the trade marks in dispute have been found to be identical.

In fact, as already explained in the section b) of the present decision, the manner in which the elephants are depicted in the case of the earlier marks and in the contested mark are clearly different taking into account the shape, position, colour and other characteristics of the elephants.

The comparison of the signs has permitted the Opposition Division to find that the signs are neither visually nor aurally similar. The only link between the signs is conceptual and it is due to the presence of a depiction of elephants in all of them. However, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 25).

As regards the earlier Community trade mark, it is true that some of its elements are not particularly distinctive, namely the verbal elements ‘PREMIUM INDIAN TONIC WATER’, but nevertheless they add to the overall different impression created by the signs.

In the present case the Opposition Division also considers that it is important to take into account the impact of the method of purchase of the goods. The Court has stated that when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods and the way they are marketed (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27).

The category of goods involved may increase the importance of one of the different aspects of similarity between signs (visual, phonetic and conceptual) because of how goods are ordered and/or purchased.

For example, where goods are ordered orally, as in the case of some of the goods in Class 33, 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 (15/01/2003, T‑99/01, Mystery, EU:T:2003:7, § 48).

As already pointed out above, the signs in dispute cannot be compared aurally. In the absence of any oral similarity and taking into account the significant visual differences between the marks, the Opposition Division concludes that the conceptual similarity existing between the earlier marks and the contested mark is not sufficient to lead to a likelihood of confusion for the relevant public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Francesca DINU

Jorge IBOR QUILEZ

Plamen IVANOV

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.

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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.