OPPOSITION No B 2 480 963

Radeberger Gruppe Holding GmbH, Darmstädter Landstr. 185, 60598 Frankfurt/Main, Germany (opponent), represented by Mai Rechtsanwälte, Lutterstr. 14, 33617 Bielefeld, Germany (professional representative)

a g a i n s t

Het Anker N.V., Guido Gezellelaan 49, 2800 Mechelen, Belgium (applicant), represented by IP Hills NV, Hubert Frère-Orbanlaan 329, 9000 Gent, Belgium (professional representative).

On 19/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 480 963 is upheld for all the contested goods, namely

Class 32: Beers; waters, beverages; still water; non-alcoholic beverages; juices; syrups for beverages; fruit-flavored beverages; essences for making beverages; isotonic beverages, not for medical purposes; preparations for making beverages; non-alcoholic malt free beverages, other than for medical use.

Class 33: Alcoholic beverages except beers; distilled beverages; alcoholic beverages containing fruit; alcoholic bitters; digesters, liqueurs and spirits; alcoholic energy drinks

2. European Union trade mark application No 13 359 401 is rejected for all the contested goods. It may proceed for the remaining, non-contested, goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 359 401, namely against all the goods in Class 32 and some of the goods in Class 33. The opposition is based on German trade mark registration No 1 053 979. The opponent invoked Article 8(1)(b) EUTMR.

A PRELIMINARY REMARK ON THE SUBTANTIATION OF THE EARLIER RIGHT

The applicant argues in its observations that the opposition must be rejected as unfounded as the opponent did not substantiate it in accordance with Rule 20 (1) EUTMIR. On 03/03/2015 the Office invited the opponent to file further material in order to substantiate its earlier right by 08/07/2015. This time limit (namely ‘the cooling-off’ period) was additionally extended upon request of both parties and since one of the parties opted out, new time limits were set by the Office, in particular the opponent was given until 17/12/2015 to complete the substantiation of its earlier right. The opposition is based on an earlier national right, namely on a German trade mark registration No 1 053 979; consequently, the opponent had to provide a document concerning the registration and validity of that earlier right, as well as the respective translation into the language of proceedings.

However, the Opposition Division notes that, in fact, the opponent submitted such document originating from the German Patent and Trade Mark Office and translated into English on the date of filing of its opposition, namely 19/02/2015. Therefore, the earlier right was duly substantiated within the substantiation period.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of German trade mark registration No 1 053 979.

The request was submitted in due time and is admissible given that the earlier trade mark ‘Carolus’ was registered more than five years prior to the publication of the contested application.

The contested application was published on 28/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 28/11/2009 to 27/11/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 32: Beer

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 11/02/2016, in its observations, the applicant required the opponent to show proof of genuine use of its earlier right. Due to an oversight, the opponent was not explicitly invited by the Office to submit the required evidence of proof of use. However, on 14/04/2016 the opponent submitted the relevant documents on own initiative. On the same day, 14/04/2016, the Office acknowledged the receipt of the relevant evidence and, according to Rule 22(2) EUTMIR, explicitly invited the opponent to submit any additional evidence of use by 27/04/2016. Since the opponent did not submit any additional evidence, the Opposition Division will take into account and examine the evidence filed by the opponent on 14/04/2016, within the time limit of substantiation.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Affidavit (Enclosure 1) signed by the opponent’s marketing director, where it is stated that the opponent’s beer is a seasonal product with frequent sales between August and February. Furthermore, the witness provides the total sales for the relevant period 2009-1014, calculated in quantities sold, namely as hectolitres and distributed in both, bottles and barrels, as well as the total sum of the sales estimated in Euro. The affidavit is accompanied by two images illustrating samples of a bottle and a barrel, both bearing the trade mark ‘Carolus’ and the verbal elements ‘DER STARKE’, written in smaller letters underneath. It may be seen that the note attached to the barrel has the indication date 20/11/2014.

• 39 copied of invoices (Enclosure 2) issued by the opponent’s company to different clients in the territory of Germany, in particular Frankfurt am Main, Offenburg, Melsungen, Langen (Hessen), Dreieich, Eschborn, Offenbach am Main, etc. All the invoices contain references to consecutive sales of items (beer) offered under the trade mark ‘Carolus’ between the relevant periods 16/02/2010 and 19/11/2014. The opponent exclusively notes that these invoices represent only ‘exemplary samples’ but not the exhaustive sales of the opponent’s products throughout the relevant period.

• Copies of a sales leaflet with details of the opponent’s beer assortment in German (Enclosure 3), a menu insert (Enclosure 4) and a table tent (Enclosure 5) with promotional character, which, according to the opponent’s representative, have been distributed to clients in Germany during the period October, 2013 and February, 2014. The materials contain illustrations of the opponent’s bottled beer bearing the trade mark ‘Carolus’.

• A leaflet (Enclosure 6) concerning a fundraising event, called ‘Leberecht’, with a minimum contribution of EUR 3, as indicated on the material.

• Extracts from promotional brochures (Enclosure 7) produced by diverse national retailers of, inter alia, alcoholic and non-alcoholic beverages, as evident from the addresses referred to and the language of the content (German), in particular retail chains such as ‘Schluckspecht’, ‘HERKULES E-center’, ‘GLOBUS’, ‘Eins-A’, ‘Trinkgut’, ‘Profi Getränke Shop’, etc. The brochures concern different periods between 2009 and 2014, as may be seen from the validity of the discount prices or from the issue dates of the editions. It may be also noticed that, apart from the trade mark ‘Carolus’ that appears on beer bottles, some of the opponent’s products also bear the additional designations ‘Doppelbock’ or ‘Binding’.

• Printouts from diverse internet sources (Enclosures 8 and 9), including such maintained by the opponent (www.binding.de), with information about the opponent’s beer, as well as with ratings and customers reviews, mainly dated between 2009 and 2015. The information has been extracted at www.ratebeer.com, www.bierverkostung.de and www.beeradvocate.com, constituting popular independent websites for online rating of beer brands by public at large.

Place and time of use

The invoices, the promotional brochures and the leaflets show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (EUR) and some addresses in Germany, as referred to above. Therefore, the evidence relates to the relevant territory.

Although there are a few indications on the brochures and as consumers’ reviews which are outdated, the remaining evidence is dated within the relevant timeframe and the Opposition Division considers that it is sufficient to show use in respect to that relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. Furthermore, the assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). In addition, it must be pointed out that the Office does not necessarily require a high threshold of proof of genuine use.

In the present case, the documents filed, namely the invoices, the brochures and the printouts from independent sources provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The opponent has submitted 39 copies of invoices as examples of its sales figures of beer products bearing the brand ‘Carolus’. The applicant claims in its observations that the opponent’s product is seasonal. However, the Opposition Division notes that use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous during the relevant period of five years. It is sufficient if the use had been made at the very beginning or end of the period, provided that this use was genuine (judgment of 16/12/2008, T-86/07, Deitech, EU:T:2008:577).

In the present case, the invoices show frequent sales in consecutive years during the relevant period when the opponent’s beer appears on the market, between August and February, and these sales are considered sufficient to demonstrate the extent of use of the opponent’s mark throughout the relevant period. Furthermore, these examples for sales were collaborated with the total sales drawn up by the witness. Although documents produced by the opponent or interested parties are given less probative value, the sales figures provided by the witness in amount, sold quantity, and profits realised still give some indirect information about the opponent’s brand active participation on the market.

In addition, the brochures published by independent parties support the assumption of real presence of the brand on the market, especially by listing part of the opponent’s distribution channels; contrary to the applicant’s claim that no time indication was shown, the Opposition Division notes that the brochures contain references to the relevant period, as expected, the autumn and winter season, when the product is usually being sold. In conclusion, the ratings given and the reviews about the brand by independent parties also constitute a serious indication of the effective use of the mark throughout the relevant period and for the territory of Germany.

Nature of use

For the sake of completeness, the Opposition Division points out that the opponent’s mark ‘Carolus’ has often been used in conjunction with other verbal elements, as illustrated in the evidence above. Firstly, it must be noted that it is quite common in some market areas for goods to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. As regards the term ‘Binding’, this is the name of the brewery producing the opponent’s beer, ‘Binding-Brauerei AG’, and moreover, this company is economically-related with the opponent itself. The Opposition Division acknowledges that the names of the particular breweries are a common additional indication that the relevant products bear on their labels.

Furthermore, the words ‘Doppelbock’ and ‘Der Starke’, as the opponent itself states, the first word is a descriptive term of a particular type of strong beer and the expression meaning ‘The strong one’ is allusive to the characteristics of the product as a strong beer. These words will be understood by the German public as such and will be paid less attention as the distinctive term ‘Carolus’ that will be then the only indication of the commercial origin of the goods in question. Consequently, on the basis of these findings, the Opposition Division considers that none of the above referred terms alters the distinctive character of the word mark ‘Carolus’ itself and that the evidence shows that the mark has been used as registered.

Conclusion

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark ‘Carolus’ during the relevant period in the relevant territory and in relation to beer.

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: Beer

The contested goods are the following:

Class 32: Beers; waters, beverages; still water; non-alcoholic beverages; juices; syrups for beverages; fruit-flavored beverages; essences for making beverages; isotonic beverages, not for medical purposes; preparations for making beverages; non-alcoholic malt free beverages, other than for medical use.

Class 33: Alcoholic beverages except beers; distilled beverages; alcoholic beverages containing fruit; alcoholic bitters; digesters, liqueurs and spirits; alcoholic energy drinks.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Beers are identically contained in both lists of goods (including in their singular form).

Furthermore, the contested non-alcoholic beverages are similar to a high degree to the opponent’s beer since the goods have the same purpose as beverages and furthermore, they coincide in their relevant publics, distribution channels and origins. Furthermore, these goods are usually in a great competition with each other.

The contested waters, beverages; still water; juices; syrups for beverages; fruit-flavored beverages; isotonic beverages, not for medical purposes; non-alcoholic malt free beverages, other than for medical use are classified as non-alcohol beverages and the same findings apply in respect to those goods, there are similar to a high degree to the opponent’s beer.

The contested essences for making beverages; preparations for making beverages are all ingredients and additives used in the production of beers. They are similar to a low degree to the opponent’s beer. Although the contested goods are aimed mainly at producers of beer rather than the general public, such goods are also made available in the form of homemade beer brewing kits, in which they form the main ingredients, and, thus, there is a possible overlap in producers, distribution channels and relevant public.

Contested goods in Class 33

As a preliminary remark it must be noted that beers are in principle similar to alcoholic beverages (except beers). 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. Beers and alcoholic beverages can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings.

Therefore, the contested alcoholic beverages except beers; distilled beverages; alcoholic beverages containing fruit; alcoholic bitters; digesters, liqueurs and spirits; alcoholic energy drinks are similar to the opponent’s beer.

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 found to be identical or similar to various degrees are directed at the public at large. As to the applicant’s argument, it is true that beer experts and beer connoisseurs may constitute a certain part considered professional public; however, this is not the general rule applied to this category of goods. Furthermore, the degree of attention is average.

3. The signs

Carolus	GOUDEN CAROLUS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 two signs are word marks, whereby the earlier mark is written in title case letters and the contested sign in upper case letters. However, in the case of word marks the word as such is protected and not its written form; therefore, it is immaterial whether the contested sign is represented in upper or lower case letters. Both signs have no more distinctive or dominant elements.

Visually, the signs coincide in the word ‘Carolus’, comprising the earlier mark and present as a second word in the contested sign. They only differ in the additional word ‘GOUDEN’ in the contested sign. Therefore, bearing in mind that the earlier mark is entirely incorporated in the contested sign, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛ Carolus’, present identically in both signs. The pronunciation differs in the sound of the additional word of the contested sign, ‘GOUDEN’, which has no counterpart in the earlier mark. Likewise, taking into account that the earlier mark’s sole element is entirely incorporated in the contested sign, the signs are considered aurally similar to an average degree.

Conceptually, the German public will perceive the word ‘Carolus’, present in both signs, as the ancient Latin version of the name ‘Charles’ or ‘Karl’ or as a surname. The verbal element ‘GOUDEN’ is meaningless for the German public. However, as both signs still refer to the same name or surname, the signs are considered conceptually similar to an average degree.

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

The goods in question are identical and similar to different extent and the degree of attention is average.

The signs are visually, aurally and conceptually similar to an average degree. This is due to the fact that the contested sign entirely incorporates the earlier mark’s verbal element ‘Carolus’ considered to have a normal distinctiveness in relation to the goods in question, Consequently, when encountering either of the two marks, a significant part of the public may associate it with the other one due to the coinciding distinctive verbal element, ‘Carolus’, present as an individualised element in both marks.

In addition, although consumers might be able to distinguish between the signs, owing to the differentiating word ‘GOUDEN’ in the contested sign, this additional element in itself is not capable of excluding any potential link that consumers may establish. It cannot be excluded that this word might be seen as indicating a new line of the opponent’s products. Consequently, consumers might believe that the trade marks belonged to the same undertaking or economically-linked undertakings, which would lead to a likelihood of association. Moreover, it must be taken into account that the conflicting signs are, in fact, word marks with no other differentiation than the additional verbal element ‘GOUDEN’.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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). In the present case, taking into account that both companies generally operate at the beverages market and bearing in mind the greater similarity of the signs in question, the principle of interdependence will apply also for the lowly similar goods.

The applicant argues that its present EUTMA has reputation and, moreover, that it has filed a similar Belgian trade mark application in 1959. The applicant supports this claim by various pieces of evidence, in particular, Annexes 1, 2 and 3 of its first observations.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

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 German trade mark registration No 1 053 979. It follows that the contested trade mark must be rejected for all the contested goods. However, it may proceed for the remaining, non-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 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

Steve HAUSER

Cristina CRESPO MOLTÓ

Volker MENSING

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.